In EmeraChem Holdings LLC v. Volkswagen Group of Am. Inc., the Federal Circuit reminded the PTAB that it must abide by the APA’s requirements of adequate notice and an opportunity to respond when conducting a post-grant review. While affirming certain challenged claims as being obvious under pre-AIA 35 U.S.C. § 103(a), the Court reversed the PTAB’s obviousness determination on a trio of claims and remanded them for further consideration and clarification. The PTAB’s conclusion that claims 3, 16 and 20 were obvious was based on the inclusion of a reference that was not properly identified in the petition or Institution Order and which the patent owner never had the opportunity to address during the inter partes review proceeding.
William Meunier is a Member based in the firm’s Boston office. He handles all types of IP disputes, with a particular emphasis on patent infringement litigation, inter partes reviews, and other matters related to enforcement of intellectual property rights. He has extensive experience leading litigation teams to resolve patent infringement disputes in a diverse array of technology areas, and has litigated cases in district courts throughout the United States. With more than 18 years of experience, Bill counsels clients in all phases of patent litigation, from initial counseling through trial and appeal.
The Federal Circuit has further clarified the scope of the covered business method (CBM) review program under the America Invents Act (AIA), explaining in Secure Axcess, LLC. v. PNC Bank National Association that in order for patent to be a CBM patent, it is not enough that the claimed subject matter may be used in a financial activity. Rather, to qualify as a CBM patent, a patent must have at least one claim that contains a financial activity element.
The AIA contains a temporary program by which a CBM patent may be challenged on any ground of patentability. A threshold requirement to CBM review is that the challenged patent is in fact a covered business method patent. The AIA defines a CBM patent as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” AIA §18(d)(1). Continue Reading Federal Circuit Clarifies Scope of Covered Business Method Review
For just the third time ever, the Patent Trial and Appeals Board (“PTAB” or the “Board”) recently sided with a Patent Owner in an inter partes review (“IPR”) to find that evidence of secondary considerations of non-obviousness compelled rejection of the Petitioner’s invalidity challenges. In doing so, the Board may have provided other patent owners with a roadmap for prevailing in IPRs with this rarely successful argument against obviousness.
World Bottling Cap had successfully petitioned the Board for inter partes review of Crown Packaging Technology’s U.S. Patent No. 8,550,271 on obviousness grounds. The ’271 Patent describes a bottle cap made with thinner and harder steel compared to conventional caps. Continue Reading PTAB Provides A Possible Roadmap For Patent Owners To Successfully Argue Secondary Considerations Of Nonobvious
When the Patent Trial and Appeal Board issues a final written decision finding against an IPR Petitioner, can that Petitioner necessarily appeal that adverse decision? In a case of first impression, the Federal Circuit recently answered “no.”
In Phigenix, Inc. v. ImmunoGen, Inc., the Federal Circuit held that Petitioner Phigenix lacked standing to appeal the PTAB’s final IPR decision in favor of Patent Owner ImmunoGen because Phigenix failed to prove that there was an actual “case or controversy” between it and ImmunoGen concerning the challenged patent. According to the Federal Circuit, although such a “case or controversy” may not be necessary for Phigenix to appear in an IPR proceeding before an administrative agency like PTAB, it remains a requirement for Phigenix to seek appellate review in a federal court.
The Federal Circuit has again addressed which types of patents are eligible for Covered Business Method (“CBM”) review before the Patent Trial & Appeals Board. Approximately one week after issuing the recent Unwired Planet v. Google decision clarifying the proper standard to determine whether a patent is a CBM patent, the Federal Circuit issued a decision in Ameranth, Inc. v. Agilsys, Inc., which demonstrates the great deal of deference the Federal Circuit may give the Board in determining what constitutes a CBM patent.
A threshold issue for CBM review is whether the challenged patent is a CBM patent and thus eligible for CBM review. As the Federal Circuit explained last week, a CBM patent is statutorily defined as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” To fall within the “technological inventions” exception to CBM patents under 37 C.F.R. §42.301(b), the claimed subjected matter as a whole must satisfy two requirements: (1) it must recite a technological feature that is novel and unobvious over the prior art; and (2) it must solve a technical problem using a technical solution.
The America Invents Act (“AIA”) mandates that a Covered Business Method Review is available only for challenging the validity of covered business method patents. On November 21, 2016, the Federal Circuit ruled in Unwired Planet v. Google that the Patent Trial and Appeal Board (PTAB) had rendered this limitation “superfluous” by failing to apply the correct statutory definition of “covered business method patent.” Accordingly, the Federal Circuit vacated PTAB’s final written decision and remanded the case for a threshold determination of whether the challenged patent is a covered business method patent under the controlling statutory definition.
On October 9, 2013, Google petitioned for Covered Business Method (CBM) patent review of Unwired Planet’s U.S. Patent No. 7,203,752. On April 8, 2014, PTAB instituted CMB review (CBM 2014-00006), stating that, when determining whether the ’752 patent was a CBM patent, the proper inquiry is “whether the patent claims activities that are financial in nature, incidental to a financial activity, or complementary to a financial activity.” Applying this standard, PTAB determined that the ’752 patent was a CBM patent eligible for CBM review because the claimed invention could be used to facilitate advertising and therefore is incidental or complementary to a financial activity.
The Federal Circuit reaffirmed last week that the Patent Trial and Appeal Board’s (PTAB’s) decision to discontinue inter partes review (IPR) proceedings is not reviewable on appeal. In Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., the Federal Circuit held that just as the PTAB’s initial decision whether to institute inter partes proceedings is not appealable in light of 35 U.S.C. §314(d) and the Supreme Court’s recent Cuozzo decision, neither is a subsequent decision to vacate that institution decision.
Bosch sued Cardiocom (a subsidiary of Medtronic) in 2013 for infringing two Bosch patents. Cardiocom then filed petitions for inter partes reviews of the Bosch patents, which the PTAB denied in January 2014. Medtronic then filed three more petitions seeking inter partes reviews of the same Bosch patents, listing Medtronic as the sole real party in interest. The PTAB instituted the proceedings but allowed Bosch discovery regarding Cardiocom’s status as a real party in interest. Based on the discovery, the PTAB granted Bosch’s motion to terminate the proceedings because Medtronic failed to name Cardiocom as a real party in interest as required by 35 U.S.C. §312(a)(2).
As a patent owner involved in patent litigation, you must consider numerous factors when negotiating a settlement agreement. An important contemplation is timing, because finalizing a settlement agreement at the wrong juncture of your legal proceedings can have devastating results. Specifically, the recent district court ruling in Protegrity USA, Inc., et al. v. Netskope, Inc., Case No. 15-cv-02515-YGR (N.D. Cal. Sept. 13, 2016) suggests that settling during your appeal of an unfavorable district court judgment may leave you stuck with the lower court’s original ruling.
The Federal Circuit recently determined that it lacked jurisdiction to review the Patent Trial and Appeal Board’s determination that assignor estoppel has no affect in an inter partes review (“IPR”). The majority’s decision in Husky Injection Molding Sys Ltd., v. Athena Automation Ltd., Nos. 2015-1726, 2015-1727 (Fed. Cir. Sep. 23, 2016) effectively allows former patent owners and inventors to use IPRs to challenge patents they have since assigned.
On March 23, 2016, the Federal Circuit in MAG Aerospace Indus., Inc. v. B/E Aerospace, Inc., Nos. 2015-1370, -1426, upheld a decision concerning U.S. patents directed to vacuum toilets found on commercial aircraft. In its opinion, the Federal Circuit provided guidance on when assignor estoppel may prevent an accused infringer from challenging a patent’s validity and enforceability.
MAG Aerospace Industries, LLC (“MAG”) had sued B/E Aerospace (“B/E”) alleging infringement of patents for “technology that facilitates maintenance and service of vacuum toilets and minimizes vehicles downtime through the use of toilet components that are ‘line replaceable units.’” The inventor of the patents at issue, who currently works for B/E, had assigned the patents-in-suit to his previous employer, who had in turn assigned them to MAG. Based on these facts, the United States District Court for the Central District of California granted summary judgment that the inventor was in privity with B/E and that assignor estoppel thus barred B/E from attacking the validity of the patents. The district court also granted B/E’s motion for summary judgment of non-infringement on all patents.
MAG appealed the summary judgment finding, and B/E appealed the finding of assignor estoppel. After addressing (and affirming) the district court’s non-infringement judgment, the Federal Circuit provided a helpful summary and analysis of the doctrine of “assignor estoppel,” ultimately upholding the district court’s application of assignor estoppel to B/E’s invalidity defenses.