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.

Continue Reading Federal Circuit Puts the Brakes on PTAB Final Written Decision For Procedural APA Violation

In a move that could drastically change the patent law landscape, the United States Supreme Court recently granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group LLC, No. 16-712, to answer the question whether the inter partes review (IPR) process violates the U.S. Constitution by “extinguishing private property rights through a non-Article III forum without a jury.”

In 2001, Oil States Energy Services LLC (“Oil States”) was granted U.S. Patent No. 6,179,053 for a lockdown mechanism to ensure a mandrel is locked in an operative position during fracking.  Oil States sued Greene’s Energy Group LLC (“Greene’s Energy”) in the Eastern District of Texas in 2012 for infringing this patent, and in turn, Greene’s Energy petitioned the United States Patent and Trademark Office (USPTO) to institute an IPR on the patent.  This petition was granted. After the proceedings, the Patent Trial and Appeal Board (PTAB), the administrative body of the USPTO that handles IPRs, concluded the challenged patent claims were invalid.  Oil States appealed to the Federal Circuit, which affirmed the decision, and Oil States then petitioned the Supreme Court for certiorari.

Continue Reading Supreme Court to Decide the Constitutionality of Inter Partes Review

The Patent Trial and Appeal Board (“PTAB”) issued Final Written Decisions regarding Cisco’s U.S. Patent Nos. 6,377,577 (the “’577 Patent”) and 7,023,853 (the “’853 Patent”) on May 25, 2017 and U.S. Patent No. 7,224,668 (the “’668 Patent”) on June 1, 2017.  The PTAB found the ’577 and ’668 Patents invalid but upheld the validity of the ’853 Patent.  The Inter Partes Review (“IPR”) proceedings were brought by Arista Networks in retaliation to Cisco’s accusations of infringement brought in multiple venues, including at the U.S. International Trade Commission (“ITC”), which had just a few weeks earlier upheld the validity of these very same patents and determined that Arista infringed the ’577 and ’668 Patents, and issued exclusion and cease and desist orders accordingly.  Since the IPR decisions issued Arista has filed a petition asking the ITC to suspend its limited exclusion order regarding the ’577 Patent based on the PTAB’s decision and is expected to file a similar request with respect to the ’668 Patent.  On the other side, Cisco plans to appeal the PTAB’s decisions to the Federal Circuit.  The uncertainty created by these inconsistent outcomes is an issue for patent owners, and it will be interesting to see how these cases are resolved.  In addition, this case shows that even though the ITC does not stay its investigations for IPRs, IPRs may still impact ITC proceedings.

Continue Reading PTAB Invalidates Two Cisco Patents Found Valid and Infringed at the ITC

723px-US-CourtOfAppeals-FederalCircuit-Seal_svgIn its opinion in Aylus Networks, Inc. v. Apple Inc., the Federal Circuit expanded the scope of prosecution disclaimer to statements made by a patent owner during Inter Partes Review (IPR) proceedings.  The Court explained that extending the doctrine to cover patent owner statements, made either before or after institution of an IPR, ensures that claims are not argued in one way to maintain patentability and a different way to support infringement allegations.  The Court also noted that its conclusion promotes the public notice function of intrinsic evidence and protects the public’s reliance on statements made during IPR proceedings.

Continue Reading Federal Circuit Expands Scope of Prosecution Disclaimer to IPR Proceedings

723px-US-CourtOfAppeals-FederalCircuit-Seal_svgThe Court of Appeals for the Federal Circuit (the Federal Circuit) has more recently been indicating to the Patent Trial and Appeal Board (the Board) the importance of explaining its reasoning when invalidating patent claims.  The Federal Circuit’s decision in Icon Health and Fitness v. Strava, finding that the Board did not make requisite factual findings or provide adequate explanations, is the latest reminder from the Court.

Appellee Strava sought inter partes reexamination of U.S. Patent No. 7,789,800.  The Examiner found certain claims obvious over various prior art references.  The Board affirmed the Examiner’s rejection of all pending claims as obvious.  Appellant Icon Health and Fitness appealed the rejection of twelve claims to the Federal Circuit.  The Federal Circuit affirmed in part as to three of the twelve claims, but vacated and remanded in part as to the other nine, stating that the Board’s decision “contain[ed] no substantive discussion of the limitations at issue.” Continue Reading Federal Circuit Reminds PTAB to Explain its Reasoning

america_338678930For 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

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

On November 15, 2016, a split panel of the Federal Circuit, consisting of Judges Moore and O’Malley, ruled that the antedating standard demanded by the Patent Trial and Appeal Board, requiring a “continuous exercise of reasonable diligence,” was too exacting and in conflict with Federal Circuit precedent.  Slip Op. at 5-6 (emphasis in the original).

The appeal, Perfect Surgical Techniques, Inc. v. Olympus America, Inc. (Appeal No. 2015-2043), arose from the Board’s inter partes review (“IPR”) decision holding each claim at issue in U.S. Patent No. 6,030,384 (“’384 patent”) unpatentable as anticipated or obvious over Japanese Application Publication No. H10-33551 A (“JP ’551”).  In so finding, the Board determined that Perfect Surgical Techniques (“PST”) failed to antedate JP ’551 because it had not proven that the ’384 patent named inventor, Dr. Nezhat, was reasonably diligent in reducing his invention to practice.  The Board criticized PST for not showing “sufficiently specific … facts and dates” of Dr. Nezhat’s diligence during specific portions of the diligence period and ultimately concluded that PST failed to demonstrate Dr. Nezhat’s “continuous exercise of reasonable diligence for the entire critical period.”  Slip Op. at 6.

Continue Reading Federal Circuit Corrects the Board’s “Too Exacting” Diligence Standard

USPTO SealSince Kyle Bass founded Coalition for Affordable Drugs X LLC (CFAD) to challenge pharmaceutical patents, CFAD has filed numerous petitions with the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (Office) seeking to institute inter partes review (IPR) proceedings to invalidate a number of pharmaceutical patents, including three patents owned by Anacor Pharmaceuticals, Inc., as previously discussed at Global IP Matters.  On October 21, 2016, the PTAB issued written decisions on the two IPRs filed by CFAD invalidating claims of U.S. Patent No. 7,056,886 (the ‘886 Patent) that covers Shire PLC’s drug Gattex®.

Gattex® is a prescription medicine used in adults with Short Bowel Syndrome (SBS) who need additional nutrition or fluids from intravenous (IV) feeding (parenteral support).  The medicine helps the remaining intestine (bowel) absorb more and reduces the need for parenteral support.

Gattex® received FDA approval in 2012 and had sales of $67.9 million in 2014 and sales of $141.7 million in 2015.

Continue Reading Kyle Bass’ First IPR Win At The PTAB

723px-US-CourtOfAppeals-FederalCircuit-Seal_svgThe 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).

Continue Reading PTAB Vacating Its Initial Institution Decision is Not Appealable, Federal Circuit Says