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On June 30th, the Federal Circuit granted a petition for re-hearing en banc in LKQ Corp. v. GM Global Tech. Operations LLC.[1] LKQ, an auto parts repair vendor for GM, successfully petitioned for inter partes review of GM’s design patent for a front fender design,[2] arguing it was anticipated by a prior art reference (Lain) and obvious over Lian alone or in combination with a brochure for the 2010 Hyundai Tucson. The PTAB ultimately affirmed the patentability of GM’s claimed design, prompting LKQ to appeal to the Federal Circuit. On appeal, LKQ argued that the PTAB’s obviousness analysis utilized tests overruled by the Supreme Court’s decision in KSR, and, as such, the obviousness standard for design patents should mirror the standard for utility patents set forth in KSR. However, a three-judge panel of the Federal Circuit disagreed, noting in relevant part that “it is not clear the Supreme Court has overruled” the tests for obviousness applied by the PTAB.Continue Reading Federal Circuit to Decide Whether KSR Applies to Design Patents

Can a petitioner’s reply in an IPR proceeding present new arguments and evidence responding to a proposed claim construction first raised in the patent owner’s response?  In Axonics, Inc. v. Medtronic, Inc., Nos. 2022-1532, 2022-1533 (Fed. Cir. Aug. 7, 2023), the Federal Circuit answered in the affirmative, vacating the PTAB’s final written decision of…

After the Supreme Court’s decision in United States v. Arthrex, Inc., the Patent Office implemented an interim process for the Director to review Patent Trial and Appeal Board decisions in AIA trials. The Office sought public feedback on the process last year (link) and received more than 4,000 responses (link)! The process has yet to be formalized via traditional notice and comment rulemaking, though someday, perhaps, it will. Until then, the Patent Office continues to offer new updates and information, most recently on July 24, 2023.Continue Reading PTAB Updates and Expands the Director Review Process and Offers Transparency in Ex Parte Appeals

The Patent Office is not supposed to issue separate patents for the same invention to competing inventors. Several statutory provisions empower the Office to reject pre-AIA patent application claims of the later inventor. But sometimes it’s not clear who is the later inventor. Those provisions are therefore unhelpful. So, the Patent Trial and Appeal Board administers an increasingly rare proceeding called an “interference” to assesses which inventor was the last to invent. Through this proceeding, the Office cancels as unpatentable (under pre-AIA 35 USC § 102(g)) the claims of the inventor the Board determines was last to invent.Continue Reading Patent Interferences May Not Involve Pure AIA Patent

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In Sanofi-Aventis Deutschland GMBH v. Mylan Pharms, Inc., No. 21-1981 (Fed. Cir. May 9, 2023), the Federal Circuit reversed the PTAB’s finding that Sanofi’s patent claims were obvious, determining the PTAB used the wrong test for deciding whether an existing patent was “analogous” to the one being challenged.

Mylan Pharmaceuticals had asserted all claims…

In Indivior UK Ltd. v. Dr. Reddy’s Laboratories S.A., Appeals 2020-2073, -2142 (Fed. Cir. Nov. 24, 2021), the Federal Circuit affirmed a Patent Trial and Appeal Board’s final decision canceling claims in Indivior’s patent claiming a polymer matrix-containing film. Certain claims in the patent recited an amount of polymer matrix inadequately disclosed, according to the Board, in a predecessor application to which the patent claimed priority. As a result, the claims’ effective filing date was so late that prior art published between the patent’s actual filing date and its earliest claimed priority date rendered the claims unpatentable. Here the prior art was none other than the Patent Office’s publication of one of the claimed priority applications.
Continue Reading So, You Invented a Numerical Range

Federal Circuit Concludes that Reference Qualifies As Prior Art Based on Reply Evidence

In VidStream LLC v. Twitter Inc., Appeals 2019-1734, -1735, (Fed. Cir. November 25, 2020), the Federal Circuit affirmed a pair of PTAB inter partes review decisions that determined VidStream’s claims, directed to publishing content on social networking websites, are unpatentable as obvious over a five-way combination of references. Important, in this appeal, was the subsidiary conclusion that one of the references – Anselm Bradford & Paul Haine, HTML5 Mastery: Semantics, Standards, and Styling (hereinafter “Bradford”) – qualified as prior art.  On appeal, VidStream did not challenge the PTAB’s determination of obviousness if Bradford qualified as a prior art reference.
Continue Reading Federal Circuit Concludes that Reference Qualifies As Prior Art Based on Reply Evidence

In Raytheon Technologies v. General Electric Corp., Appeal 2020-1755, (Fed. Cir. April 16, 2021), the Federal Circuit reversed a PTAB inter partes review decision that determined Raytheon’s claims, directed to gas turbine engines, are unpatentable as obviousness over “Knip,” a 1987 NASA technical memo.  In particular, the court determined that Knip did not enable a skilled artisan to make the claimed invention.
Continue Reading Federal Circuit Finds Lack of Enablement in Prior Art Reference

In cxLoyalty, Inc. v. Maritz Holdings Inc., Appeals 2020-1307, -1309 (Fed. Cir. Feb. 8, 2021), the Federal Circuit affirmed a PTAB final written decision in a CBM proceeding canceling Maritz’s original claims related to a GUI for a customer loyalty program, as ineligible for patenting under 35 U.S.C. § 101.  The PTAB had granted Maritz’s request to substitute amended claims, but the court reversed, concluding those claims also are ineligible under section 101.  
Continue Reading Federal Circuit Finds Loyalty Rewards Claims Ineligible

A couple of years ago, in Amerigen Pharmaceuticals Ltd. v. UCB Pharma GmbH, 913 F.3d 1076, 1082 (Fed. Cir. 2019), the Federal Circuit acknowledged its jurisdiction to decide appeals of the Board’s final written decisions in AIA trials, but explained that an appellant (AIA Trial petitioner) must demonstrate it has standing. Quoting from the Supreme Court’s decision in Spokeo, Inc. v. Robins, 136 S. Ct. 1540, 1547 (2016), the court explained the appellant must demonstrate, among other things, that it has “suffered an injury in fact.” Amerigen, 913 F.3d at 1082–83.
Continue Reading The Concrete Injury Necessary for Appellate Standing Is Flexible

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.