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  • The Federal Circuit Creates A New Standard For Assessing The Nonobviousness Of Design Patents
    06/04/2024

    On May 21, 2024, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit” or “court”) issued an en banc opinion, affirming-in-part, vacating-in-part, and remanding a United States Patent and Trademark Office, Patent Trial, and Appeal Board (“Board”) decision that the prior art, including U.S. Design Patent No. D773,340 (“Lian”) did not render unpatentable Appellee GM Global Technology Operations LLC’s (“GM”) U.S. Design Patent No. D797,625 (the “D’625 patent”), pursuant to 35 U.S.C. §§ 102 and 103. LKQ Corp. v. GM Glob. Tech. Operations LLC, No. 2021-2348, __F.4th__, 2024 WL 2280728 (Fed. Cir. May 21, 2024). The en banc court affirmed the Board’s § 102 decision of no anticipation but vacated and remanded its § 103 decision of nonobviousness because the court overruled the long-standing Rosen-Durling test. Id. 

  • PTAB Denies Institution Of Supplier’s IPR Petition Under 35 U.S.C. § 315(b)
    05/23/2024

    On May 9, 2024, the USPTO’s Patent Trial and Appeal Board (“PTAB”) denied the Petition for inter partes review of Luminex International Co., Ltd (“Luminex”), under 35 U.S.C. § 315(b), finding that Luminex filed the Petition more than one year after the date on which a real party in interest was served with a complaint alleging infringement of the challenged patent. Luminex Int’l Co., Ltd. v. Signify Holdings B.V., IPR2024-00101, Paper 10 (PTAB May 9, 2024).

    Categories : IPRsReal Party In Interest
  • Federal Circuit Vacates District Court’s Judgment Of Patent Infringement Following Affirmance Of Invalidity At The PTAB
    05/14/2024

    On May 2, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) vacated an amended final judgment of patent infringement entered by the U.S. District Court for the Eastern District of Texas against NetScout Systems, Inc. Packet Intelligence LLC v. NetScout Systems, Inc., No. 2022-2064. The CAFC’s decision was based on its affirmance of parallel Patent Trial and Appeal Board (“PTAB”) decisions finding the asserted patent claims unpatentable as obvious.

  • Federal Circuit Finds Challenged Claims of Laser Projector Alignment Patent Not Unpatentable
    03/27/2024
    On March 27, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion (i) reversing the Patent Trial and Appeal Board’s (“Board”) finding that certain challenged claims of a patent directed to a method for aligning a laser projector with respect to a work surface are unpatentable and (ii) affirming the Board’s finding that certain other challenged claims of the patent are not unpatentable. Virtek Vision Int’l ULC v. Assembly Guidance Sys., Inc., __ F.4th __ (Fed. Cir. Mar. 27, 2024).
    Categories : IPRsObviousness
  • Federal Circuit Vacates And Remands PTAB Decision Regarding Patents For Adult Incontinence Diapers
    03/26/2024

    On March 4, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding four final written decisions of the Patent Trial and Appeal Board (“PTAB”), which found all claims of U.S. Patent Nos. 8,152,788; 8,784,398; 8,771,249; and 8,708,990 to be unpatentable as obvious.

  • Federal Circuit Finds PTAB Implicitly And Incorrectly Construed Claim In Final Decision
     
    02/13/2024


    On February 7, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) reversed a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”) finding the challenged claims of the ’753 patent not unpatentable. Google LLC v. EcoFactor, Inc., __ F.3d __ (Fed. Cir. Feb. 7, 2024). In its precedential decision reversing and remanding, the CAFC found that the PTAB relied on an implicit construction of a claim limitation and that this construction was wrong.

    Categories : IPRsPTAB
  • Federal Circuit Affirms PTAB’s Final Written Decision, Holding That Obviousness Does Not Require An Actual, Physical Substitution Of Elements
    01/31/2024

    On January 22, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) invalidating the claims of U.S. Patent No. 9,458,814 (“’814 patent”) on obviousness grounds. The ’814 patent is directed to a remote start system for a vehicle. The system includes a remote start transmitter physically separate from the vehicle. The transmitter is configured to receive a signal from a user and transmit the signal to the vehicle. The vehicle, upon receiving the transmitted signal, automatically performs multiple functions: a vehicle brake is operated, a climate control system is activated, and the engine is started.

    Categories : IPRsObviousnessPTAB
  • Federal Circuit Finds PTAB Sufficiently Addressed Arguments Actually Raised In IPR Petitions
     
    11/07/2023

    On October 25, 2023, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed two final written decisions from the U.S. Patent Trial and Appeal Board (“PTAB”), determining that appellant IPR petitioner did not meet its burden of proving unpatentability.  Netflix Inc. v. DivX LLC, __ F.3d __ (Fed. Cir. October 25, 2023).  In its precedential decision, the CAFC found no error in how the PTAB understood appellant’s petition arguments and further found that certain other arguments newly raised by appellant on appeal had been forfeited.
    Categories : IP Litigation ProcedureIPRsPTAB
  • The Federal Circuit Reminds The PTAB Of The Meaning Of “A”
     
    11/01/2023

    On October 19, 2023, the United States Court of Appeals for the Federal Circuit issued an opinion that reversed-in-part, vacated, and remanded the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that the prior art, including Claire Simonnet & Alex Groisman, High-Throughput and High-Resolution Flow Cytometry in Molded Microfluidic Devices, 78 Analytical Chemistry 5653 (2006) (“Simonnet”), did not render unpatentable Appellee Cytonome/ST, LLC’s (“Cytonome”) U.S. Patent No. 10,583,439 (the “’439 patent”), pursuant to 35 U.S.C. §§ 102 and 103.  ABS Glob., Inc. v. Cytonome/St, LLC, No. 2022-1761, 2023 WL 6885009 (Fed. Cir. Oct. 19, 2023).
    Categories : IPRsObviousnessPrior ArtPTAB
  • Federal Circuit Affirms PTAB Claim Construction Interpretation And Upholds Refusal To Allow Impermissibly Broad Substitute Claims
     
    10/11/2023

    On September 1, 2023, the United States Court of Appeals for the Federal Circuit issued an opinion upholding the Patent Trial and Appeal Board’s (“PTAB”) (i) construction of the claim term “connection rejection message” as having its plain and ordinary meaning; (ii) finding that the proposed substitute independent claim was impermissibly broader than the original claim; and (iii) finding that the proposed substitute claims that were dependent on the impermissible independent claim were also impermissibly broadened.  Sisvel International S.A. v. Sierra Wireless, Inc., No. 2022-1387, -- F.4th --, 2023 WL 5659063 (Fed. Cir. Sept. 1, 2023).
    Categories : IP Litigation ProcedureIPRsPTAB
  • Federal Circuit Tells PTAB To Base Its Decision On Grounds The Parties Raise
     
    10/11/2023

    On September 11, 2023, the United States Court of Appeals for the Federal Circuit issued an opinion, vacating the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that the prior art, including U.S. Patent No. 7,859,588 (“Parulski”), did not render unpatentable Appellee Corephotonics, Ltd.’s (“Corephotonics”) U.S. Patent No. 10,225,479 (the “’479 patent”) pursuant to 35 U.S.C. § 103.  Apple Inc. v. Corephotonics, Ltd., No. 2022-1350, 2023 WL 5838695 (Fed. Cir. Sept. 11, 2023).
    Categories : IPRsObviousnessPrior ArtPTAB
  • Federal Circuit Affirms PTAB On Motivation To Combine And Reasonable Expectation Of Success
     
    10/11/2023

    On September 21, 2023, the United States Court of Appeals for the Federal Circuit affirmed a decision by the United States Patent and Trademark Office, Patent Trial and Appeal Board (“PTAB”), holding that claims of U.S. Patent No. 7,295,648 (the “’648 patent”) owned by Elekta Limited (“Elekta”) were unpatentable as obvious.  Elekta Ltd. v. ZAP Surgical Sys., Inc., No. 2021-1985 (Fed. Cir. Sept. 21, 2023).  The CAFC panel (Reyna, Stoll and Stark) reviewed the PTAB’s legal conclusions de novo and its factual findings for substantial evidence.  In affirming the PTAB, the CAFC concluded that the PTAB’s factual findings as to both the motivation to combine prior art references and the reasonable expectation of success in making the combination were supported by substantial evidence.
    Categories : IPRsObviousnessPTAB
  • Federal Circuit Vacates PTAB’s Final Written Decisions Because The Board Erred In Its Obviousness Analysis
     
    08/01/2023

    Medtronic, Inc., asserted U.S. Patent Nos. 8,626,314 and 8,036,756 against Axonics, Inc., in a patent infringement lawsuit.  In response, Axonics challenged various claims of the Medtronic patents for obviousness in inter partes reviews (IPRs).  In both IPRs, the Patent Trial and Appeal Board concluded that Axonics had failed to prove any of the challenged claims unpatentable.  Axonics appealed.  On July 10, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating the Board’s final written decisions in both IPRs.
    Categories : IPRsObviousnessPTAB
  • PTAB Finds Unified Patents’ Members Are Real Parties In Interest, But USPTO Director Says Determination Was Unnecessary And Vacates
     
    06/21/2023

    The PTAB recently released public versions of earlier decisions about the implications of Unified Patents’ business model and when the PTAB should decide disputes about identification of real parties in interest (“RPIs”).  On March 8, 2023, the PTAB issued a determination that Unified Patents should have identified its members Apple and Samsung as RPIs in its IPR challenge of MemoryWeb’s patent, which had been asserted against those members.  Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 56 (P.T.A.B. Mar. 8 2023).  On May 16, 2023, USPTO Director Vidal granted director review of the decision and vacated the RPI determination, finding it had been unnecessary to resolve the proceeding.  Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 76 (P.T.A.B. May 22, 2023).
    Categories : IPRsPTABReal Party In Interest
  • The Federal Circuit Affirms Patentability Of Teleflex Patents And Confirms Low Bar For Corroboration Of Prior Inventorship
     
    06/13/2023

    On May 24, 2023, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued an opinion affirming the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that U.S. Patent 7,736,355 to Itou, et al. (“Itou”) could not be used as prior art to invalidate five Teleflex Innovations S.à.R.L. (“Teleflex”) patents, which were on appeal.  Medtronic, Inc. v. Teleflex Innovations S.à.R.L., No. 2021-2356, 2023 WL 3606143 (Fed. Cir. May 24, 2023).
    Categories : IPRsObviousnessPrior ArtPTAB
  • Federal Circuit Affirms Unpatentability Of Gaming Machine Patent
     
    06/01/2023

    On May 9, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the unpatentability decision of the Patent Trial and Appeal Board (“Board”), finding, with respect to the independent claims, that the Board either did not misconstrue the claims or that any error with respect to the Board’s claim construction was harmless.  With respect to the dependent claims, the CAFC found that there was a sufficient motivation to combine the asserted prior art references.  Bot M8 LLC v. Sony Interactive Entertainment LLC, No. 2022-1291, -- F.4th --, 2023 WL 3311550 (Fed. Cir. May 9, 2023).
    Categories : IPRsObviousnessPTAB
  • Federal Circuit Affirms PTAB Final Written Decision Finding Fluorescence Detection Patent Not Unpatentable as Obvious
     
    05/09/2023

    On April 24, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“Board”) finding that Leica Microsystems, Inc. (“Leica”) failed to show that the claims of a patent directed to a fluorescence detection system were unpatentable as obvious. Leica Microsystems, Inc. v. Regents of the University of Michigan, Appeal No. 22-1445 (Fed. Cir. Apr. 24, 2023).
    Categories : IPRsObviousnessPTAB
  • Federal Circuit Revives Lawsuit Challenging The USPTO Director’s Fintiv Instructions On A Limited Basis To Determine Whether They Were Improperly Issued Without A Notice-and-Comment Period
     
    03/24/2023

    ​On March 13, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed-in-part and reversed-in-part an order of the United States District Court for the Northern District of California (N.D. Cal.) dismissing as unreviewable a lawsuit challenging the instructions of the Director of the U.S. Patent and Trademark Office (“USPTO”) regarding the standard for discretionary denial of petitions for inter partes review (IPR) based on pending parallel litigation involving the same patents.  Apple Inc. v. Vidal, No. 2022-1249, —F.4th— (Fed. Cir. Mar. 13, 2023).  The CAFC affirmed the unreviewability dismissal of the challenge to the Fintiv instructions as contrary to statute and arbitrary and capricious but reversed and remanded the dismissal of the challenge to the instructions as improperly issued without a notice-and-comment period.
    Categories : IP Litigation ProcedureIPRsPTAB
  • Federal Circuit Reverses PTAB’s Finding That Challenged Claim Was Not Unpatentable Where PTAB Committed Legal Error By Requiring “Bodily Incorporation” Of Obviousness Combination
     
    03/24/2023

    On February 24, 2023, the United States Court of Appeals for the Federal Circuit (CAFC) reversed a final written decision by the Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”), finding the challenged claim not unpatentable as obvious.  Intel Corp. v. PACT XPP Schweiz AG, No. 2022-0138 (Fed. Cir. Feb. 24, 2023).  In doing so, the CAFC held that the PTAB improperly required the petitioner to show the prior art references could be “bodily incorporated.”
  • USPTO Director Affirms Rejection Of Invalidity Arguments Supported Only By Expert Declaration Parroting IPR Petition
     
    02/28/2023

    On February 10, 2023, Director of the U.S. Patent & Trademark Office Katherine K. Vidal issued a decision affirming a Patent Trial and Appeal Board decision to deny institution of inter partes review. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 (Feb. 10, 2023). The Board had found, and Director Vidal agreed, that Petitioners’ expert testimony was entitled to little weight because it merely repeated, verbatim, the conclusory arguments in the petition itself. Director Vidal’s decision is “word from the top” that the practice of simply “parroting” a petition’s arguments in the expert declaration is strongly disfavored and unlikely to carry the day on invalidity.
    Category : IPRs
  • Federal Circuit Denies Application of IPR Time Limits To Director Review
     
    02/14/2023

    On February 8, 2023, in a precedential order, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the decision by the Director of the U.S. Patent and Trademark Office to deny CyWee Group Ltd.’s (“CyWee’s”) request for rehearing of two IPR proceedings.  In doing so, the CAFC rejected CyWee’s argument that the Director is required to actually review, or be able to review, all institution decisions and final written decisions within the statutory time frames set by 35 U.S.C. §§ 316(a)(11) and 314(b).  CyWee Group Ltd. v. Google LLC, No. 2020-1565 (Fed. Cir. Feb. 8, 2023).
     
    Categories : Director ReviewIPRs
  • Federal Circuit Affirms PTAB Decision Allowing IPR Claim Amendments That Go Beyond Addressing Instituted Grounds
     
    11/22/2022

    On November 14, 2022, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the Patent Trial and Appeal Board (PTAB) allowing claim amendments during inter partes review (IPR) proceedings that addressed issues additional to those raised by the grounds relied upon for institution of the IPR. Am. Nat’l Mfg. Inc. v. Sleep No. Corp., Nos. 2021-1321, 1323, 1379, 1382, (Fed. Cir. Nov. 14, 2022). The Court found that the PTAB had not erred when it permitted Sleep Number, the patent owner, to submit claim amendments in IPR that addressed Section 112 issues (which were additional to amendments addressing the instituted grounds).
    Categories : IP LitigationIPRsPTABSection 112
  • USPTO Director Issues Precedential PTAB Decision Finding Petitioner’s Conduct An Abuse Of The Inter Partes Review Process
     
    10/18/2022

    On October 4, 2022, the Director of the United States Patent and Trademark Office (the “Director”) issued a precedential decision finding that the conduct of Petitioner OpenSky Industries, LLC (“OpenSky”) was an abuse of process, sanctioning Petitioner, and remanding to the Patent Trial and Appeal Board (the “Board”) for further proceedings.  OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064, Paper 102 (P.T.A.B. Oct. 4, 2022).
    Categories : IPRsSanctions
  • Federal Circuit Finds Appellant Patentee Lacks Standing In An Appeal From An Inter Partes Review Finding Unpatentable A Claim Previously Cancelled In Ex Parte Reexamination
     
    09/07/2022

    On August 29, 2022, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion in a consolidated appeal relating to two inter partes reexamination (“IPR”) decisions from the Patent Trial and Appeal Board (“PTAB”) finding all challenged claims of United States Patent 6,393,096 unpatentable.  Best Medical Int’l., Inc. v. Elekta Inc., Nos. 2021-2099, 2021-2100 (Fed. Cir. Aug. 29, 2022).  The CAFC held, inter alia, that Appellant patentee lacked standing to appeal the PTAB’s IPR unpatentability decision with respect to a claim that Appellant previously had canceled in an ex parte reexamination (“reexamination”).
    Categories : IPRsPTAB
  • Federal Circuit Holds IPR Estoppel Applies To A Patent Claim Identified In An IPR Petition But Not Considered In The Final Written Decision
     
    09/07/2022

    On August 17, 2022, the Federal Circuit reversed a district court’s grant of summary judgment of invalidity, finding that IPR estoppel under 35 U.S.C. § 315(e)(2) barred Ingenio, Inc.’s invalidity argument, even though the challenged claim had not been addressed by the PTAB in the final written decision in Ingenio’s IPR.  Click-to-Call Techs. LP v. Ingenio, Inc., No. 2022-1016 (Fed. Cir. Aug. 17, 2022).
  • Federal Circuit Affirms PTAB’s Finding Of Unpatentability Of Patent Relating To Ultrasonic Flow Meters And Housings, Involving Product-By-Process Claim Element
     
    08/23/2022

    On August 12, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed the decision of the Patent Trial and Appeal Board (“PTAB”), which found unpatentable the challenged claims of a patent relating to housings for ultrasonic flow meters. Kamstrup A/S v. Axioma Metering UAB, __ F.4th __ (Fed. Cir. Aug. 12, 2022).
    Categories : Claim ConstructionIPRs
  • Federal Circuit Affirms PTAB Decision Finding Claims Unpatentable Based On A Patent Application Publication’s Incorporation By Reference Of A Provisional Application
     
    05/17/2022

    On May 6, 2022, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office.  Konda v. Flex Logic Techs., Inc., No. 2022-1162, __ F. App’x __ (Fed. Cir. May 6, 2022).  The PTAB agreed that a prior art reference rendered unpatentable the challenged claims.
    Categories : Inter Partes ReviewIPRsPrior ArtPTAB
  • Federal Circuit Vacates PTAB Determination That Claims Were Not Obvious Because Of Flawed Motivation-To-Combine Analysis
     
    05/17/2022

    On April 29, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) vacated and remanded the final written decision of the Patent Trial and Appeal Board (“PTAB”), which found that the Petitioner, Auris Health, Inc. (“Auris”), had failed to demonstrate that the challenged claims were unpatentable as obvious based on evidence of general skepticism about the field of invention.  Auris Health, Inc. v. Intuitive Surgical Operations, __ F.4th __ (Fed. Cir. April 29, 2022).
    Categories : IPRsObviousness
  • PTAB Exercises Discretion To Deny IPR Institution Due To ITC Investigation Despite Multiple Stayed District Court Cases
     
    04/05/2022

    On March 18, 2022, the Patent Trial and Appeal Board of the United States Patent and Trademark Office exercised its discretion under 35 U.S.C. § 314(a) to deny institution of a petition for inter partes review filed by Google LLC challenging a patent asserted against it in an ITC investigation and a parallel district court case. Google LLC v. EcoFactor, Inc., IPR2021-01578, Paper 9 (PTAB Mar. 18, 2022).  The PTAB’s denial relied primarily on the late stage of the ITC investigation.
  • Federal Circuit Holds That Applicant Admitted Prior Art Cannot Be The Basis For An IPR Challenge
     
    02/08/2022

    On February 2, 2022, the United States Court of Appeals for the Federal Circuit vacated a decision from the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, finding that the Board erred in concluding that applicant admitted prior art (“AAPA”) constitutes “prior art consisting of patents or printed publications” under 35 U.S.C. § 311(b).  Qualcomm Inc. v. Apple Inc., __ F.4th __ (Fed. Cir. Jan. 27, 2022).
  • The District Court For The Eastern District Of Texas Denies Motion To Stay Pending Ex Parte Reexamination
     
    01/19/2022

    On January 6, 2022, Chief Judge Gilstrap of the United States District Court for the Eastern District of Texas denied a motion to stay pending ex parte reexamination (“EPR”) of the patent asserted in the litigation, and found that defendant was relying on the EPR as part of a strategy of “examiner shopping.”  Longhorn HD LLC v. NetScout Systems, Inc., 2-20-cv-00349.
    Categories : IP Litigation ProcedureIPRsPTAB
  • Federal Circuit Affirms Finding That Patent Challenger Failed To Show Claims Relating To Accessing Web Content Outside Of A Browser Unpatentable
     
    12/21/2021

    ​On December 8, 2021, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed the decision of the Patent Trial and Appeal Board  (“Board”), finding that petitioner Lenovo Holding Company, Inc. (“Lenovo”) had failed to show by a preponderance of the evidence that the claims it challenged in an inter partes review (“IPR”) were unpatentable.  Lenovo Holding Company, Inc. v. DoDots Licensing Solutions LLC, __ F.4th __ (Fed. Cir. Dec. 8, 2021).
    Categories : Claim ConstructionIPRs
  • Federal Circuit Decides IPR Petitioner’s Standing In Two Appeals, With Different Outcomes
     
    12/08/2021

    On December 1, 2021, the United States Court of Appeals for the Federal Circuit (CAFC) issued two opinions related to the same inter partes review (IPR) petitioner’s standing to appeal two decisions of the Patent Trial and Appeal Board (PTAB).  ModernaTx, Inc. v. Arbutus Biopharma Corp, — F.4th — (Fed. Cir. Dec. 1, 2021); ModernaTx, Inc. v. Arbutus Biopharma Corp f/k/a Protiva Biotherapeutics, Inc., — F.4th — (Fed. Cir. Dec. 1, 2021).  In the first opinion, the CAFC found that petitioner had established standing by demonstrating a sufficient risk of an infringement suit based on the patent owner’s statements and actions.  In the second opinion, the CAFC found that petitioner lacked standing at the time the appeal was filed because petitioner’s evidence of financial burden from the validity of the patent at issue was too speculative.
    Categories : IP Litigation ProcedureIPRsPTAB
  • Federal Circuit Rejects Arguments That The USPTO Is Unconstitutionally Structured
     
    10/19/2021

    On October 13, 2021, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued an opinion rejecting a patentee’s arguments challenging the constitutionality of the U.S. Patent and Trademark Office’s (USPTO’s) structure based on its purported financial interest in instituting inter partes reviews (IPRs).  Mobility Workx, LLC v. Unified Patents, LLC, --- F.3d --- (Fed. Cir. Oct. 13, 2021).  The CAFC found that the financial interests of the Patent Trial and Appeal Board (PTAB) leadership and of individual administrative patent judges (APJs) were too remote to violate due process under the U.S. Supreme Court’s decision in Tumey v. Ohio.
    Categories : IP Litigation ProcedureIPRsPTAB
  • District Court Limits Expansion Of IPR Estoppel Law
     
    08/03/2021

    On July 21, 2021, the United States District Court for the Eastern District of Texas, Marshall Division, denied plaintiff’s motion for summary judgement that its patent was not invalid due to inter partes review (“IPR”) estoppel pursuant to 35 U.S.C. § 315(e)(2).  General Access Solutions, Ltd. v. Sprint Spectrum LLC, 2-20-cv-00007 (Robert W. Schroeder, III).
    Categories : IP Litigation ProcedureIPRs
  • District Of Delaware Denies Motion To Preclude Plaintiff From Asserting At Trial Patent Claims Found Unpatentable By The US Patent Office’s Patent Trial And Appeal Board
     
    07/13/2021

    On July 6, 2021, Judge Noreika of the United States District Court for the District of Delaware issued an Order denying defendant’s motion in limine to preclude plaintiff from asserting claims of a patent that were found unpatentable by the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office in an inter partes review.  TrustID, Inc. v. Next Caller Inc., Slip. Op. (D. Del. July 6, 2021).  The Court determined that plaintiff was not collaterally estopped.
  • Federal Circuit Affirms PTAB’s Non-Obviousness Decision Due To Lack Of Motivation To Combine
     
    04/20/2021

    On April 13, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), finding that the claims of the challenged patent had not been proved obvious because the petition for inter partes review (IPR) failed to show that there would have been a motivation to combine the two allegedly invalidating prior art references.  Apple Inc. v. INVT SPE LLC, —F.3d — (Fed. Cir. Apr. 13, 2021).
    Categories : IPRsObviousnessPTAB
  • Federal Circuit Affirms PTAB’s Decision Related To Estoppel Over IPR Joined Parties And Obviousness
     
    03/17/2021

    On March 9, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming estoppel and obviousness rulings by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”).  Uniloc 2017 LLC v. Facebook Inc., ___ F.3d ___ (Fed. Cir. March 9, 2021).  The CAFC ruled that it had jurisdiction to review the PTAB’s decision as to estoppel related to the inter partes review (“IPR”) estoppel provision of Section 315(e)(1).  The CAFC further ruled that a joined party to a first IPR was not barred from maintaining review of claims that the primary challenger became estopped from challenging based on a decision in a second IPR to which the challenger was joined.
     
  • Federal Circuit Affirms PTAB’s Substitution-Based Obviousness Decision Related to Refrigerant Mixture
     
    03/02/2021

    On February 24, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the obviousness decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). Daikin Indus., LTD v. The Chemours Co. FC, LLC, __ F.3d __ (Fed. Cir. Feb. 24, 2021).  The CAFC found that the petition for inter partes review (IPR) properly set forth a substitution-based theory of obviousness and that the PTAB’s substitution analysis was supported by substantial evidence.
     
    Categories : IPRsObviousnessPTAB
  • PTAB Denies IPR Institution Due To Co-Pending ITC Investigation
     
    11/24/2020

    On November 18, 2020, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) denied institution of a petition for inter partes review (IPR).  Google LLC v. EcoFactor Inc., case no. IPR2020-00946 (PTAB Nov. 18, 2020).  In its decision, the PTAB exercised its discretion under 35 U.S.C. § 314(a) to deny institution because of a co-pending investigation before the International Trade Commission (ITC) involving the challenged patent.
     
  • PTAB Institutes IPR Over Patent Owner’s Section 325(d) Argument That The Same Art And Arguments Were Already Considered By The Patent Office
     
    10/13/2020

    On October 6, 2020, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) instituted an inter partes review (IPR) proceeding, rejecting Patent Owner’s argument that the PTAB should exercise its discretion under 35 U.S.C. § 325(d) to deny institution because the same prior art and arguments were before the Patent Office Examiner during original prosecution.  Sony Interactive Entertainment LLC v. Bot M8, LLC, Case No. IPR2020-00726 (PTAB Oct. 6, 2020).  In doing so, the PTAB agreed with Petitioner that the Examiner overlooked a reference’s teaching. 
     
  • Federal Circuit Affirms PTAB’s Claim Construction, Despite Recitation Of Incorrect Legal Standard, And Concludes That Substantial Evidence Supports Its Unpatentability Findings
     
    10/08/2020

    On September 30, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”), finding certain challenged claims unpatentable under the PTAB’s claim construction of “low-power radio frequency signal,” and finding that substantial evidence supports the PTAB’s underlying factual findings relating to the challenged claims.  Emerson Electric Co. v. SIPCO, LLC, __ F.3d __ (Fed. Cir. Sept. 30, 2020).
     
    Categories : IPRsPTAB
  • Federal Circuit Limits Scope Of IPR Estoppel, And Vacates Claim Construction That Was Based On Expert Testimony
     
    09/29/2020

    On September 24, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming-in-part, reversing-in-part, vacating, and remanding a final judgment of the United States District Court for the Eastern District of Texas that Appellant’s patent claims are not infringed; that Cross-appellant is estopped from raising certain validity challenges based on its joinder to an inter partes review (“IPR”) before the Patent Trial and Appeal Board (“PTAB”); and that asserted claim 6 was not improperly broadened during reexamination.  Network-1 Technologies, Inc. v. Hewlett-Packard Co., __ F.3d __ (Fed. Cir. Sept. 24, 2020).  In its decision, the CAFC vacated the district court’s judgment of non-infringement as based on incorrect claim construction, vacated the district court’s judgment as a matter of law (“JMOL”) on validity for improperly applying statutory estoppel, and affirmed the district court’s decision with respect to improper claim broadening.
     
    Categories : IP Litigation ProcedureIPRsPTAB
  • ITC Suspends Enforcement Of Remedial Orders Pending Appeal Of IPR Final Written Decision
     
    09/15/2020

    On September 8, 2020, the United States International Trade Commission (“ITC”) issued an opinion suspending enforcement of remedial orders pending appeal of the Patent Trial and Appeals Board’s (“PTAB”) final written decision (“FWD”) of unpatentability in a parallel inter partes review (“IPR”) proceeding.  Certain Unmanned Aerial Vehicles and Components Thereof, Inv. No. 337-TA-1133, Comm’n Op. (Sept. 8, 2020); Certain Unmanned Aerial Vehicles and Components Thereof, Inv. No. 337-TA-1133, Final Determination (Aug. 20, 2020).  In its opinion, the ITC relied on its broad discretion in selecting a remedy, its recognition of the PTAB’s leading role in assessing the validity of patent claims, and Congress’s goal for IPRs to be a substitute for litigation on patent validity issues.
     
    Categories : IP Litigation ProcedureIPRsITCPTAB
  • Patent Office Issues Binding Memorandum Concerning Use Of Applicant Admitted Prior Art In Inter Partes Review Proceedings
     
    09/01/2020

    On August 18, 2020, Director Iancu of the U.S. Patent and Trademark Office (“USPTO”) issued a Memorandum entitled “Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Reviews Under § 311.”  The Memo provides binding guidance concerning the USPTO’s view of the use of “applicant admitted prior art” (referred to as “AAPA” or “APA,” for short) by a petitioner to support a patentability challenge in an inter partes review (“IPR”).
     
    Categories : IPRsPTAB
  • Federal Circuit Affirms District Court’s Dismissal Of Declaratory Judgment Suit Challenging The Constitutionality Of Retroactive Application Of Inter Partes Review
     
    08/25/2020

    On August 20, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the U.S. District Court for the Northern District of California dismissing plaintiff-appellant Security People, Inc.’s suit under the Administrative Procedure Act (“APA”) challenging the constitutionality of the cancellation of its patent in an inter partes review proceeding (“IPR”).  Security People, Inc. v. Iancu, __ F.3d __ (Fed. Cir. Aug. 20, 2020).
     
    Categories : IPRsPTAB
  • Federal Circuit Holds That Patent Owner’s Substitute Claims Presented During IPR Are Subject To A Full Examination
     
    07/28/2020

    On July 22, 2020, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeal Board’s (PTAB) denial of a rehearing on a motion to amend the claims of a patent challenged in an inter partes review (IPR).  Uniloc 2017 LLC v. Hulu, LLC & Netflix, Inc., No. 19-1686, __ F.3d __ (Fed. Cir. Jul. 22, 2020).  The CAFC held that the PTAB may consider any ground of unpatentability—not just anticipation or obviousness grounds based on patents or printed publications under Section 311(b)—when considering the patentability of substitute claims during an IPR.
     
  • PTAB Grants Petition For Review Despite Overlap With Earlier Filed Petitions And Advanced Stage Of Parallel Litigation
     
    06/30/2020

    On June 23, 2020, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) instituted a third inter partes review (IPR) of U.S. Patent No. 7,039,435.  LG Electronics Inc. v. Bell Northern Research LLC, case numbers IPR2020-00318.  In its decision, the PTAB declined to exercise its discretion under 35 U.S.C. § 314(a) to deny review on efficiency and fairness grounds.
     
    Categories : IPRsPTAB
  • Federal Circuit Reverses Fees Award For Failure To Meet The Threshold For Exceptional Case
     
    06/16/2020

    On June 8, 2020, the Court of Appeals for the Federal Circuit (CAFC) reversed an order of the United States District Court for the Central District of California (CDCA) awarding fees under 35 U.S.C. § 285 and 15 U.S.C. § 1117(a).  Munchkin, Inc. v. Luv N’ Care, Ltd., No. 2019-1454, __ F.3d __ (Fed. Cir. Jun. 8, 2020).  The CAFC found that the CDCA abused its discretion because the facts relied upon by the movant did not support a determination that plaintiff acted unreasonably in bringing and maintaining its case.
     
  • PTAB Institutes IPR, Despite Primary References Having Been Considered During Original Patent Prosecution
     
    06/01/2020

    On May 22, 2020, the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office issued a decision instituting inter partes review (“IPR”) over Patent Owner’s argument that the PTAB should exercise its discretion to deny institution because the IPR petition relied on several references that were considered by the patent examiner during prosecution of the application leading to the patent-at-issue.  Medacta USA, Inc. v. RSB Spine, LLC, IPR Case No. 2020-00264, Paper 24 (PTAB May 22, 2020).  The PTAB found that the examiner “erred in a manner material to the patentability of the challenged claims” by overlooking certain aspects of the prior art references.
     
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