Can a defendant who prevails in an exceptional patent infringement suit by invalidating the patent in inter partes review (IPR) recover its associated Patent Office-related attorney’s fees? A split three-judge panel of the Federal Circuit recently said no in Dragon Intellectual Property LLC v. Dish Networks LLC, Appeal Nos. 2022-1621, -1777, Slip Op. at 8 (Fed. Cir. May 20, 2024) (“Dragon V”). This blogsite previously discussed (link) several instances where courts, including the Federal Circuit, have authorized this recovery when the Patent Office proceedings substituted for aspects of the district court litigation between the same parties. How then did this two-judge majority conclude otherwise?Continue Reading Federal Circuit Holds Recoverability of Attorney’s Fees Does Not Extend to AIA Trials
Reexamination
Federal Circuit Imperils Term-adjusted Patents
The Federal Circuit recently upheld the Patent Office’s decision to reject claims in four separate reexamination cases due to obviousness-type double patenting (ODP). In re Cellect, LLC, Appeal Nos. 22-1293, -1294, -1295, -1296 (Fed. Cir. Aug. 28, 2023). This decision is important because it expands ODP, a doctrine judges developed long ago, when patents…
PTAB Updates and Expands the Director Review Process and Offers Transparency in Ex Parte Appeals
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
Patent Interferences May Not Involve Pure AIA Patent
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
Bizarre Facts Beget Bizarre Result
Before the Federal Circuit’s recent decision in In re Vivint, Inc., Appeal 2020-1992 (Fed. Cir. Sept. 29, 2021), the Patent Trial and Appeal Board affirmed a reexamination examiner’s final rejection of Vivint’s patent claims as unpatentable over prior art. In due course, the Patent Office would have issued a certificate canceling those claims. But Vivint appealed the Board’s decision, not because the examiner’s/Board’s decisions were substantively incorrect, but because the Office should not have ordered reexamination. The AIA’s revisions to the Patent Act give the Board discretion to deny inter parties review and deny requests for ex parte reexamination that present “the same or substantially the same prior art or arguments previously … presented to the Office.”
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Does Section 285 Permit an Award of Attorney’s Fees for Patent Office Proceedings?
Back in 1988, the Federal Circuit reversed a district court decision that refused to award a party its reasonable attorney’s fees incurred in successfully litigating a patent’s validity before the Patent Office. PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565 (Fed. Cir. 1988). The Office determined that the patent asserted in litigation—stayed pending the Office’s review—was invalid and obtained through inequitable conduct. Nobody contested the district court’s conclusion that the case was exceptional.
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USPTO to Patent Owners – Don’t Forget About Reexams and Reissues
Recently updated statistics from the USPTO provide little comfort for patent owners seeking to amend claims during an IPR proceeding. The Motion to Amend Study, Installment 5 through FY2018, updated March 2019, reports that patent owners have filed a motion to amend in 326 of the 3,599 completed trials (9%) and in 90 of the 670 pending trials (13%). Of the 326 motions filed in completed trials, the Board decided a motion to amend requesting to substitute claims in 205 trials (63%), and of those decided motions, Board granted or granted-in-part a motion to amend in only 21 of the 205 trials (10%).
Continue Reading USPTO to Patent Owners – Don’t Forget About Reexams and Reissues
Play the Claim
Monsanto Technology LLC v. E.I. DuPont de Nemours & Co. Appeal 2017-1032 (Fed. Cir. Jan. 5, 2018), illustrates “[t]he life of a patent solicitor has always been a hard one.” [1] The case concerns an inter partes reexamination of a Monsanto patent in which the Patent Office concluded the claimed subject matter was inherently described in an earlier DuPont patent. The Patent Office reached this conclusion because DuPont presented during the reexamination its unpublished data regarding experiments described in its earlier patent. The Federal Circuit affirmed.
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Is the PTAB Bound by a Prior Federal Circuit Claim Construction?
In Knowles Electronics LLC v. Cirrus Logic, Inc., No. 2016-2010 (Fed. Cir. Mar. 1, 2018), the Federal Circuit affirmed a PTAB decision that upheld an examiner’s rejection of claims for anticipation in an inter partes reexamination (IPX). The same claims had earlier been challenged, and determined to be not invalid (over different prior art), in an ITC decision that was also affirmed by the Federal Circuit. MEMS Tech. Berhad v. Int’l Trade Comm’n, 447 F. App’x 142 (Fed. Cir. 2011). The decision in the IPX appeal turned on construction of a particular claim term (“package”), and according to a dissent authored by Judge Newman, the court should have reversed the PTAB’s decision due to claim preclusion, because the court had earlier construed the same term differently.
Continue Reading Is the PTAB Bound by a Prior Federal Circuit Claim Construction?
ODP Dooms CIP
In re Janssen Biotech, Inc., Appeal 2017-1257 (Fed. Cir. Jan. 23, 2018), is a cautionary tale concerning patents protecting a blockbuster drug providing patients an important therapy and bringing its owners billions of dollars in annual revenue. It began twenty-five years ago with a then-unremarkable decision to file a patent application. The filed application was of a type that others then also filed—and some may still be filing today. The Patent Office issued that application, without proper examination it turns out, as a patent. Under the circumstances of this case, this type of patent, the courts and Patent Office have since determined, is invalid for obviousness-type double patenting.
Continue Reading ODP Dooms CIP