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Inna Dahlin, PhD is an Associate based in the firm’s Boston office and represents clients on a broad range of intellectual property issues. Her clients are primarily engaged in consumer electronics, software, medical devices and systems, bioinformatics, imaging, networking technologies, semiconductors, biotechnology, speech recognition, and defense. Her practice includes patent preparation and prosecution, drafting infringement and validity opinions, conducting patentability and freedom to operate studies, and providing strategic portfolio counseling.

On Monday, November 27, 2017, the Supreme Court heard oral arguments in SAS Institute v. Matal.

Issue presented

Whether 35 U.S.C. § 318(a) requires that the Patent Trial and Appeal Board (PTAB or Board) issue a final written decision as to every claim challenged by a petitioner, or does it allow the Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner.

Background

On September 14, 2012, ComplementSoft sued SAS in the Northern District of Illinois for infringement of U.S. Patent No. 7,110,936.  On March 29, 2013, SAS filed a petition with the PTAB for inter partes review (IPR) of the ‘936 Patent, challenging patentability of all 16 claims of that patent.  The PTAB instituted IPR as to 9 claims (1 and 3-10) of the ‘936 patent and on August 6, 2014 issued a final written decision under 35 U.S.C. § 318(a), holding that claim 4 was not invalid over prior art, whereas claims 1-3 and 5-10 were unpatentable.  SAS’ request for rehearing before the Board was denied.  On June 10, 2016, the 2-1 divided Panel of the Federal Circuit Rejected SAS’s argument that the Board must address all claims challenged in an IPR petition in its final written decision, and affirmed the PTAB’s decision, except vacated with respect to claim 4.   The Panel consisted of Judges Stoll, Chen, and Newman, with Judge Newman dissenting in part.  As Judge Stoll stated, there is “no statutory requirement that the Board’s final decision address every claim raised in a petition for inter partes review.  Section 318(a) only requires the Board to address claims as to which review was granted.” The Federal Circuit reasoned that 35 U.S.C. § 314  and 35 U.S.C. § 318(a) are different and that § 318(a) “does not foreclose the claim-by-claim approach the Board adopted [in Synopsys] and in this case.” In a dissenting opinion, Judge Newman stated that 35 U.S.C. § 314(a) required USPTO either refuse to institute IPR entirely, or to review all challenged claims when “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”

Continue Reading SAS v. Matal – Overview of Oral Arguments in the Supreme Court

On September 6, 2017, an expanded panel of the Patent Trial and Appeal Board issued an “informative” decision in General Plastic Industrial Co., Ltd, v. Canon Kabushiki Kaisha setting forth the Board’s framework for analyzing follow-on inter partes review (IPR) petitions.  In response to five concurrent requests for rehearing, a panel of seven administrative patent judges reviewed the factors articulated in NVIDIA Corp. v. Samsung Elec. Co., IPR2016-00134, Paper 9 (PTAB May 4, 2016) and, in doing so, denied all five requests.  While acknowledging that multiple petitions challenging the same patent may be permitted based on specific facts of each case, the Board explained that follow-on petitions run the risk of undue inequities and prejudices to patent owners, and petitioner’s submission of multiple, staggered petitions constituted “an inefficient use of the inter partes review process and the Board’s resources.”

Continue Reading General Plastic Industrial Co. v. Canon Kabushiki Kaisha: PTAB Explains Factors for Follow-On Petitions

This post is a follow-up to our prior post To Seek Design Protection or Not, That is the Question! where we discuss situations where it is worth considering seeking a design patent.  Here we highlight takeaways from a USPTO Inventor Info Webinar (the “Webinar”) held on September 21, 2017, that focused on design patent drawing requirements, as well as on other issues on design patents. The Webinar’s slides can be found here.

As a brief recap, 35 U.S.C. § 171 states that “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.”  Thus, the statute requires that a design be for an article (i.e., rather than a disembodied design, a design per se) and that the article have one or both of some surface ornamentation and configuration that differs this article from others.

Continue Reading Recap on Design Patent Drawings

While design patents are gaining wider attention—thanks in part to the highly-publicized litigation involving Samsung and Apple—they still remain an underutilized form of intellectual property (IP) protection.  This blog discusses the benefits of design patent protection, and what is required to obtain a design patent.

There are two predominate types of patents: 1) utility patents that protect “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” and 2) design patents that protect “any new, original and ornamental design for an article of manufacture.”  While both types of patents provide valuable IP protection, utility patent applications outnumber design patent applications by nearly 7 to 1 (e.g., 288,335 utility patent applications were filed in the U.S. in 2015 vs. 39,097 design patent applications).

Continue Reading To Seek Design Protection or Not, That is the Question!

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.

Continue Reading Losing IPR Petitioners May Lack Standing To Appeal

shutterstock_484403530The New Year brings excitement and anticipation of changes for the best.  Some of the pending patent cases provide us with ample opportunity to expect something new and, if not always very desirable to everybody, at least different.  In this post, we highlight several cases that present interesting issues and that we anticipate may provide for new and important developments in the patent law this year.

Continue Reading IP Cases to Watch in 2017

The Federal Circuit yesterday issued a decision that will make many patent owners and IP practitioners breathe easier.  In Immersion Corp. v. HTC Corp. the Court reversed a district court holding that a continuation application filed on the same day that its parent application issued is not entitled to the parent priority date.  It is now without question that waiting to file a continuation, continuation-in-part, or divisional application until the day that the parent application issues as a patent  will still result in the continuing application being accorded the earlier priority date under 35 U.S.C. § 120.

In the instant case, Immersion Corporation (“Immersion”) filed a patent application related to touch control devices for a computer on January 19, 2000, which issued as U.S. Patent No. 6,429,846 on August 6, 2002.  On that same day, August 6, 2002, Immersion filed another application having the same written description as the ‘846 patent, which ultimately issued as U.S. Patent No. 7,148,875.  The parties do not dispute priority chain stemming from the ‘975 patent for several other patents asserted by Immersion against HTC.  A disputed link in the priority chain was the one between the ‘846 patent and the application that matured into the ‘975 patent.  If the ‘975 patent was not entitled to the earlier priority date of the ‘846 patent, the ‘975 patent would be invalid based on Immersion’s own international application publication.

Continue Reading Federal Circuit Rules That “Same-Day Continuations” Are Proper

Filing an appeal brief with the Patent Trial and Appeal Board (PTAB) can be an effective way to advance prosecution and secure allowable claims. After an appellant’s filing of a PTAB appeal brief, an examiner may respond with an examiner’s answer. 37 C.F.R. §§ 41.37, 41.39. The appellant then has a choice to allow the appeal to proceed to the PTAB or to first respond to the examiner’s answer in a reply brief. 37 CFR § 41.41. The examiner is entitled to introduce new grounds of rejection in the examiner’s answer, which the appellant may rebut in the reply brief. The USPTO recently issued guidance, “Responding to New Grounds of Rejection in an Examiner’s Answer,” which we summarize below in addition to providing other related useful tips.
Continue Reading Tips for Responding to New Grounds of Rejection in an Examiner’s Answer

Last Friday the Patent Trial and Appeal Board (PTAB) denied four Sandoz Inc. petitions for instituting inter partes review (IPR) of U.S. 8,455,524 (IPR2015-00005), U.S. 7,612,102 (IPR2015-00006), U.S. 7,659,290 (IPR2015-00007), and U.S. 7,659,291 B2 (IPR2015-00008) (referred to herein as the “EKR Patents”).  The EKR Patents are assigned to EKR Therapeutics, a wholly owned subsidiary of Chiesi USA, Inc.  The PTAB concluded that the “Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim.”  See, e.g.IPR2015-00005 at 2. The PTAB reached this conclusion based, in part, on Sandoz’s failure to “present sufficient evidence” in support of its arguments that the challenged claim elements in the four patents were inherent. Continue Reading Petitioners Must Present Sufficient Evidence to Establish Inherency

U.S. patent applications filed after March 16, 2013, when the “First-Inventor-to-File” portion of the America Invents Act (AIA) took effect, have started to be published.  Thus, it is a good time for applicants to consider filing U.S. patent applications that can be patentable over applications that otherwise would be considered prior art.  The AIA provides for such a prior art exception in 35 U.S.C. § 102, although it comes with drawbacks and risks that applicants may generally wish to avoid, as discussed further below.

Continue Reading Does the AIA Have a Prior Art Exception You Can Use?