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In Arthrex Inc. v. Smith & Nephew, Inc., Appeal 2018-2140 (Fed. Cir. Oct. 31, 2019), the Federal Circuit concluded that the PTAB’s Administrative Patent Judges (APJs) are “principal” officers and their appointment by the Secretary of Commerce therefore violates the Constitution’s Appointments Clause. The issue arose in an appeal of a decision by a panel of APJs canceling claims in Arthrex’s patent in a recent inter partes review (IPR). But because that decision occurred while there was an Appointments Clause violation, the court vacated and remanded the IPR to be decided by a different panel of APJs.
Continue Reading Fixing an Appointments Clause Violation

PTABWatch Takeaway: In mid-October 2019, the Patent Office updated its subject matter eligibility guidance published in January 2019. The update does not change the guidance, but simply offers clarifications invited by public responses to the January guidance.

On October 17, 2019, the U.S. Patent and Trademark Office (USPTO) issued a 22-page an Update (“October PEG Update”) to its 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 PEG”).
Continue Reading Highlights of the U.S. Patent Office’s Update to its 2019 Subject Matter Eligibility Guidance

The Patent Trial and Appeal Board (PTAB) recently published a second update to its Trial Practice Guide (TPG). The TPG, initially released in 2012, was first updated in August 2018 (see here). This second update further revises and/or adds guidance relating to certain general procedures and many aspects of trial practice before the PTAB.
Continue Reading PTAB Revises Trial Practice Guide To Reflect Recent Decisions On Claim Construction, Petition and Motion Practice

The Patent Office issued Honeywell a patent that required correction. The patent, according to Honeywell, did not include the proper claim for the benefit of priority to the filing date of an application that Honeywell had earlier filed. But before Honeywell noticed the error and tried to correct that priority claim, its competitor, Arkema, petitioned the Patent Trial and Appeal Board to institute a post grant review proceeding. Shortly after institution, Honeywell sought the Board’s authorization to file a motion for leave to obtain from the Patent Office’s Director a certificate of correction. After all, the Director often issues certificates to correct priority claims. But the Board refused authorization and ultimately canceled the patent. On appeal, the Federal Circuit vacated the Board’s decision, chastising the Board for abusing its discretion. Honeywell Int’l Inc. v. Arkema Inc., Appeals 2018-1151, ‑1153 (Fed. Cir. Oct. 1, 2019).Continue Reading The Chaos of Too Many Rules

Federal Circuit Affirms Obviousness Decision by Board, Finds No APA Violation Based on New Characterization of Passage Providing Motivation to Combine

In Smith & Nephew, Inc. v. Arthrocare Corp., Appeal No. IPR2016-00918 (Fed. Cir. Aug. 21, 2019), the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision in an IPR to invalidate patent claims on the basis of obviousness, determining that the Board did not violate the Administrative Procedure Act (APA) by describing the motivation to combine the teachings of the prior art in different language than that used in the petition.  Additionally, the court affirmed the Board’s claim construction as reasonable and found that subjecting a pre-AIA patent to inter partes review was constitutional when the patent issued after the passage of the AIA. 
Continue Reading Federal Circuit Affirms Obviousness Decision by Board, No Violation

In a recent decision vacating the PTAB’s finding that a draft standard for video coding emailed to a listserv was not publicly accessible, the Federal Circuit again corrected the PTAB’s application of the legal standard to determine the public accessibility of prior art. Samsung Electronics Co., Ltd. v. Infobridge Pte. Ltd., case no. 2018-2007, 2018-2012, 2019 WL 3047113 (Fed. Cir. July 12, 2019). Although multiple means of accessibility were alleged, the PTAB’s analysis was upheld with respect to all but the listserv distribution.
Continue Reading A Reference is Publicly Accessible if a Person of Ordinary Skill in the Art Could Access the Reference

The Federal Circuit recently issued a decision in In re Marco Guldenaar Holding B.V., ruling the claims at issue were directed to the abstract idea of rules for playing a dice game.  Finding that the recited elements did not amount to significantly more than that abstract idea itself, the court found the claims ineligible for patent protection.  
Continue Reading Federal Circuit Upholds Patent Ineligibility of Dice Game

In re Global IP Holdings LLC, Appeal 2018-1426 (Fed. Cir. July 5,2019), concerns patent law’s written description requirement, under 35 USC § 112. The patentee is trying to reissue its patent on a carpeted load floor of a car. The patented floor includes thermoplastic components. The components, according to the patentee, ought not have been limited to thermoplastics, rather each should have been any plastic. So, the patentee sought to reissue the patent with a claim to the broader invention. The Patent Office examiner rejected the revised claim.
Continue Reading Is the Written Description Requirement a Nose of Wax?

PTABWatch Takeaway: The Patent Trial and Appeal Board (PTAB) designated as “informative” four decisions applying the Patent Office’s 2019 patent eligibility guidance (PEG) regarding 35 U.S.C. § 101. While the decisions are not binding on future PTAB panels, the decisions provide useful insights into how the PTAB may approach issues of patent eligibility on ex parte appeal, and what type of claims are likely to be found patent-eligible.

An overview of the PEG, including a description of how to analyze abstract ideas under the Patent Office’s newly revised step 2A, may be found in our previous posting titled How the PTAB Reviews Software Inventions Under the 2019 Revised Subject Matter Eligibility Guidance.
Continue Reading Four Decisions to Know regarding the PTAB’s Treatment of the new 2019 Patent Eligibility Guidelines

In May 2019, the PTAB designated precedential two IPR decisions related to its discretion to institute inter partes review.

In Valve Corp. v. Electronic Scripting Products, Inc., the Board denied institution under 35 U.S.C. § 314(a), applying the precedential General Plastic factors to deny institution of a follow-on petition.  See General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 17-18 (PTAB Sept. 6, 2017)(precedential) and our post about this case.  The Board determined that all the General Plastic factors weighed against institution.
Continue Reading PTAB Precedential Decisions on Discretion to Institute Inter Partes Review

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.