On Tuesday, the Patent Trial and Appeal Board (PTAB) designated two decisions precedential and one as informative explaining the circumstances under which the Board will exercise its discretion under 35 U.S.C. § 325(d) and 35 U.S.C. § 314(a) to deny petitions. The cases analyzed situations where the prior art and invalidity arguments advanced by Petitioner were similar/identical to those previously considered by the examiner and where the timing of a final decision may coincide with another body’s findings (e.g., a district court trial) regarding validity. These cases provide guidance to Petitioners and Patent Owners alike about how to construct discretionary denial arguments, in particular regarding the appropriate way to address art that may or may not be cumulative to already-considered references.Read More
The Federal Circuit’s decision last week in Fox Factory, Inc. v. SRAM, LLC provided clarity regarding the nexus requirement of secondary considerations of non-obviousness, particularly with respect to whether a patentee is entitled to a presumption of nexus.  Despite the Patent Trial and Appeal Board (“PTAB”) finding that the cited art disclosed all the limitations of the challenged patent—which claimed a bicycle chainring for engagement with a drivetrain—and that a skilled artisan would have been motivated to combine the cited prior art, the PTAB found that, based on an analysis of secondary considerations, the claims of the challenged patent were not obvious.  The Federal Circuit focused in on the comparison of the patentee’s product and the scope of the challenged claims.  In doing so, the panel found that “[a] patent claim is not co-extensive with a product that includes a ‘critical’ un-claimed feature . . . that materially impacts the product’s functionality.” Read More
The PTAB’s Precedential Opinion Panel (“POP”) issued a decision in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, on Friday, December 20, 2019. The issue at hand: “What is required for a petitioner to establish that an asserted reference qualifies as ‘printed publication’ at the institution stage?” Hulu v. Sound View, IPR2018-01039, Paper 29 at *2 (P.T.A.B. December 20, 2019).
This decision provides clarity on an issue that was often addressed inconsistently across panels regarding the “requirements for institution involving issues of public accessibility of an asserted ‘printed publication.’” Id. at 2.Read More
In a Halloween decision, the Federal Circuit issued its opinion in Arthrex, Inc. v. Smith & Nephew, Inc. et al., an appeal from IPR2017-00275. Without wading into the technical merits of the decision, the three judge panel of Judges Moore, Reyna, and Chen, issued a decision that, at first glance, sent tremors through those who practice before the PTAB in AIA-based post-grant review proceedings: finding the appointment of PTAB judges unconstitutional.Read More
B.E. Technology LLC v. Facebook, Inc., Appeal No. 18-2356 (Fed. Cir. Oct. 9, 2019) identifies what it means to win in a case. More particularly, the Federal Circuit explained how to determine whether a party is “the prevailing party.” B.E. Technology (“B.E.”) brought a patent infringement suit in district court against Facebook and the case was stayed pending inter partes review. The Patent Trial and Appeal Board ultimately held the claims of the patent in question to be unpatentable, which was confirmed on appeal.Read More
In a notable, albeit not surprising, U.S. Federal Circuit decision today, the panel in Celgene Corp. v. Peter confirmed that an inter partes review finding of unpatentability of a pre-AIA patent is not an unconstitutional taking. (slip op. 2018-1171 (July 30, 2019)).
Noting an opening in the recent Supreme Court decision in Oil States, the Federal Circuit deemed the circumstances exceptional as their basis for review of an issue not before the PTAB in the underlying proceeding. The panel reasoned that the proceeding being “curative” in nature, and the approximately forty year period of time in which PTAB proceedings have existed subjecting granted patents to potential cancellations for that duration weighted against any unconstitutionality.Read More
The Patent Trial and Appeal Board (PTAB) issued a second update to its Trial Practice Guide, clarifying a number of logistical matters for practitioners and outlining the PTAB’s expectations and preferences for certain stages of the trial process.Read More
On April 15, 2019, the Supreme Court of the United States denied the petition for certiorari filed by the St. Regis Mohawk Tribe.Read More
Judge Bryson of the Federal Circuit, sitting by designation in the Eastern District of Texas, issued one of the clearest articulations to date in favor of granting a stay pending inter partes review. Notably, in this case, claim construction had ended, discovery was nearly complete, and trial was set to begin in three months. The defendant, Samsung, had recently joined an instituted IPR covering six of the eleven asserted claims and moved to stay the district court proceeding.
Judge Bryson clearly articulated the three factors that district courts consider when analyzing whether or not to grant a stay:
1) whether the stay will unduly prejudice the non-moving party;
2) whether the proceedings had reached an advance stage, including the stage of discovery and whether a trial date is set; and
3) whether the stay will likely result in simplifying the case before the court.
After noting that the congressional intent of post-grant review before the patent office was to be a “quick and cost effective alternative to litigation” to provide a “faster, less costly alternative to civil litigation to challenge patents” and to be “an inexpensive substitute for district court litigation that allows key issues to be addressed by experts in the field” he proceeded to walk through the three factors.Read More
On August 16, 2018, the U.S. Federal Circuit addressed when the inter partes review (IPR) time bar clock begins to tick. See Click-to-Call Tech. LP v. Ingenio, Inc., Slip Op. 2015-1242 (Fed. Cir. Aug. 16, 2018). The en banc Federal Circuit addressed whether the one year estoppel clock begins for a properly served complaint when the complaint is subsequently dismissed without prejudice. The panel found that the § 315(b) time bar applies. The filing of such a complaint, though later voluntarily dismissed, has previously formed the basis for declaratory judgment jurisdiction where the initial defendant later brings a validity challenge. See TransWeb, LLC v. 3M Innovative Props. Co., 812 F.3d 1295, 1300 (Fed. Cir. 2016).