The Patent Trial and Appeal Board has received 37 petitions for post grant review of patents issuing from examination conducted by the Patent Office’s Group Art Unit 1600. The Board has issued four final written decisions thus far. We discussed the first final written decision here, where all claims were upheld in the face of a challenge based on obviousness grounds only. Three of the four final written decisions issued so far on biotech/pharma subject matter dealt only with art-based challenges. Grünenthal GmbH v. Antecip Bioventures II LLC, Case PGR2017-00008 (June 22, 2018) marks the first PGR final written decision addressing written description of a patent arising from Art Unit 1600; all claims were held to be unpatentable under Section 112.
Continue Reading PTAB Issues First Biotech/Pharma PGR Final Written Decision Based On Written Description Challenge
Federal Circuit Splits Hairs in Hair Removal Product Interference Proceeding
In General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., Case No. 2017-1012 (Fed. Cir. May 4, 2018), the Federal Circuit affirmed the PTAB’s August 2016 decision that General Hospital Corporation’s (GHC) claims involved in an interference proceeding (that GHC requested) failed to meet the written description requirement. But the court also vacated the PTAB’s denial of GHC’s contingent motion to add a new claim as arbitrary and capricious because the PTAB did not follow its own Standing Order. The court therefore remanded the case to the PTAB to decide remaining issues in the interference.
Continue Reading Federal Circuit Splits Hairs in Hair Removal Product Interference Proceeding
Mixed Result Upheld in Personal Audio IPRs
The Federal Circuit upheld the PTAB’s mixed decisions in IPRs filed by Google to challenge claims of two Personal Audio LLC patents asserted against Apple, Samsung, Amazon and Research in Motion, in addition to Google. Google LLC v. Personal Audio LLC, Nos. 2017-1162, -1166, -2110, -2111 (Fed. Cir. Aug. 1, 2018) (non-precedential).
Continue Reading Mixed Result Upheld in Personal Audio IPRs
PTAB May Cite New References Not Cited in the IPR Petition
In affirming a PTAB IPR decision canceling claims for obviousness, the Federal Circuit concluded that the PTAB’s reliance on references not included in the original petition did not violate due process or the patent owner’s procedural rights under the Administrative Procedure Act (APA). Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372 (Fed. Cir. 2018).
Citing Genzyme Therapeutic Products Ltd. v. Biomarin Pharmaceutical. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016) (discussed here), the court stated that new evidence was to be expected during an IPR and was permissible under the APA provided the opposing party receives notice and an opportunity to reply.
Continue Reading PTAB May Cite New References Not Cited in the IPR Petition
Contour of Soup Can Saves Gravity Feed Display Design Patent
Update: On September 26, 2019, the court vacated and remanded the PTAB’s decision.
Next trip to the grocery store, stop in the canned soup aisle and take a closer look at how the canned soups are displayed on the shelves. You may notice a gravity feed dispenser with a label area. Between 2002 and 2009, Petitioner Campbell Soup Co. purchased $31 million of Patent Owner Gamon’s gravity feed display racks protected by design patent D621,645 (“the ‘645 patent”).
Continue Reading Contour of Soup Can Saves Gravity Feed Display Design Patent
When is There Standing to Appeal a PGR Final Written Decision?
In Altaire Pharm., Inc. v. Paragon Biotek, Inc., Case No. 2017-1487 (Fed. Cir. May 2, 2018), the Federal Circuit reversed in part a PGR final written decision that upheld the patentability of challenged claims, and determined that a risk of a future lawsuit for patent infringement may be sufficient to establish Article III standing for the appeal.
Under Supreme Court precedent, Article III standing requires: (1) a concrete and particularized injury, (2) caused by the challenged conduct, (3) which can be redressed by a judicial decision. Spokeo, Inc. v. Robins, 136 S. Ct. 1540 (2016). Ironically, a party that has not been charged with infringement may have sufficient standing to file a petition with the PTAB, but lack standing to appeal the PTAB’s final decision to an Article III court.
Continue Reading When is There Standing to Appeal a PGR Final Written Decision?
Written Description of a Genus Can Be Satisfied by Disclosure of Single Species in Predictable Arts
In Hologic, Inc. v. Smith & Nephew Inc., No. 2017-1389 (Fed. Cir. Mar. 14, 2018), the Federal Circuit concluded that disclosure of a species provides written descriptive support for a claimed genus where the invention was in a predicable field of art, the species was a well-known member of the genus, and other members of the genus were also well known. As a result, the court affirmed the PTAB’s decision that Smith & Nephew’s PCT application (the “Emanuel PCT”) had sufficient written description to qualify as a priority document, and therefore was not prior art. In reaching this decision, the court relied heavily on the fact that the field of the invention was a predictable art.
Continue Reading Written Description of a Genus Can Be Satisfied by Disclosure of Single Species in Predictable Arts
PTAB Failed to Properly Apply Test for Printed Publication
The Federal Circuit vacated and remanded the PTAB’s decision that a video demonstration and slides distributed by Petitioner Medtronic at three industry meetings and conferences were not publicly accessible and, thus, were not “printed publications.” Medtronic, Inc. v. Barry, Case no. 17-1169, 2018 WL 2769092 (Fed. Cir. June 11, 2018). Recent Board decisions have set a high bar for proving that materials were publicly accessible. We have previously discussed examples here, here, and here. In Medtronic, the Federal Circuit provides factors that the Board should consider in these determinations.
Continue Reading PTAB Failed to Properly Apply Test for Printed Publication
Federal Circuit Requests Briefing from Patent Office Regarding § 315(b) Time-Bar Determinations
On June 7, 2018, the Federal Circuit in Wi-Fi One, LLC v. Broadcom Corp. requested that intervenor, Patent Office director Andrei Iancu, and appellee Broadcom, file a response to Wi-Fi One’s second petition for rehearing. Wi-Fi One, Case No. 2015-1944, Docket No. 212 (June 7, 2018). At issue was whether the court should grant Wi-Fi One’s second petition for panel or en banc rehearing regarding 35 U.S.C. § 315 (b) time-bar challenges. See Wi-Fi One, LLC v. Broadcom Corp., Case No. 2015-1944, Doc. No. 210 (May 21, 2018).
Continue Reading Federal Circuit Requests Briefing from Patent Office Regarding § 315(b) Time-Bar Determinations
IPR and Estoppel after SAS Institute
The Supreme Court held on April 24, 2018 that if the Patent Office institutes and inter partes review (IPR) proceeding, it must issue a final written decision with respect to the patentability of every patent claim challenged by the petitioner. SAS Institute, Inc. v. Iancu, (discussed in greater detail here). Within days, the Patent Office issued Guidance on the impact of SAS on AIA Trial Proceedings explaining the procedures it intends to implement in view of the Court’s decision. The resulting changes are likely to be extensive, both in IPR practice and in the scope of estoppel that litigations in parallel proceedings will need to consider.
Continue Reading IPR and Estoppel after SAS Institute