George Schooff

IPR Petitioner Must Establish References are Patents or Printed Publications

In Xactware Solutions, Inc. v. Pictometry Int’l Corp., No. IPR2016-00593, Paper 45 (PTAB Aug. 28, 2017), the Patent Trial and Appeal Board held Xactware did not establish that a document was a printed publication under 35 U.S.C. § 102(b). The PTAB thus granted Pictometry’s Motion to Exclude. And, because the document was Xactware’s primary reference for asserting unpatentability against the instituted claims, the PTAB determined that Xactware failed to prove the claims unpatentable. Id. at 2. By way of background, in 2015, the owner of Pictometry sued Xactware for patent infringement. Shortly after, Xactware filed more than a dozen petitions seeking inter partes review of nine patents. Before this decision, the PTAB had ruled on each of the other petitions. In its earlier decisions, the PTAB either upheld the validity of the instituted claims, or declined to review the challenged claims with respect to eight of the nine patents. In one of the other proceedings, the same issue arose. See Xactware Solutions, Inc. v. Pictometry Int’l Corp., No. IPR2016-00594, Paper 46 (PTAB Aug. 24, 2017). There, Pictometry likewise asserted Xactware hadn’t established that the same document – a Pictometry User Guide – was publicly accessible and, therefore, was not a printed publication… Read More »IPR Petitioner Must Establish References are Patents or Printed Publications

No Estoppel for IPR Dicta

In Oil-Dri Corp. v. Nestlé Purina Petcare Co., No. 15-cv-1067 (N.D. Ill. Aug. 2, 2017), an Illinois district court held that 35 U.S.C. § 315(e)(2) does not estop an accused infringer from challenging the validity of claims under an invalidity theory even if the Patent Trial and Appeal Board’s Final Written Decision indicated the Board would not have held the claims unpatentable under the same theory, at least where the Board declined to institute inter partes review on the theory in the first place. By way of background, Oil-Dri sued Nestlé in the Northern District of Illinois alleging Nestlé infringed U.S. Patent No. 5,975,019 (“the ‘019 patent”). Shortly after, Nestlé filed a petition with the Patent Trial and Appeal Board for inter partes review of the ‘019 patent. Nestlé asserted five challenges against the ‘019 patent: (1) that claims 1-4, 6-13, 30 and 32 were unpatentable as anticipated by U.S. Patent No. 5,386,803 (“Hughes”); (2) that claims 1-4, 6-13, 30 and 32 were unpatentable as anticipated by U.S. Patent No. 5,458,091 (“Pattengill”); (3) that claims 1-13, 30 and 32 were unpatentable as obvious over Hughes; (4) that claims 1-13, 30 and 32 were unpatentable as obvious over Pattengill; and (5)… Read More »No Estoppel for IPR Dicta

IPR Estoppel Regarding Petitioned, Non-Instituted Claims

A Wisconsin district court held that 35 U.S.C. § 315(e) can estop an accused infringer from challenging a patent claim’s validity when based on a new invalidity theory, even with PTAB non-instituted claims. Douglas Dynamics, LLC. v. Meyer Prods. LLC, No. 14-cv-866-jdp (W.D. Wis. May 15, 2017). By way of background, Meyer Products petitioned the PTAB for inter partes review of claim 6 of Douglas Dynamics’ patent asserting it “is anticipated by Keeler.”  The PTAB declined to institute a review of claim 6 on that ground. In the district court action that followed, Meyer Products again asserted claim 6 was invalid, but this time for different reasons than those presented in its IPR petition.  Douglas Dynamics argued that Meyer Products was estopped from presenting its new theory under §315(e).  According to Douglas Dynamics, Meyer Products’ new theory should be treated as if it were a ground that could have been raised in its IPR petition but wasn’t, and therefore subject to estoppel.  The Federal Circuit previously held that  estoppel does not apply to non-instituted grounds.  Shaw Indus. Group, Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016).  To hold otherwise, Douglas Dynamics argued, would open the door… Read More »IPR Estoppel Regarding Petitioned, Non-Instituted Claims

Laches Is a Defense to Patent Infringement No More

The United States Supreme Court recently held that under the Patent Act, laches is not a defense to claim for damages when the infringing acts occurred within the six-year time limitation provided for recovering damages under 35 U.S.C. §286.  SCA Hygiene Prods. AB v. First Quality Baby Prods., LLC, slip op. No. 15-927 (U.S. Sup. Ct. March 21, 2017). In October 2003, SCA sent a letter to First Quality alleging that First Quality was making and selling adult diapers that infringed SCA’s rights under U. S. Patent No. 6,375,646 (‘646 patent).  First Quality responded that one of its patents—U.S. Patent No. 5,415,649 (‘649 patent)—issued before the ‘646 patent and disclosed “the same diaper construction.” Id. at 2.  First Quality thus asserted that the ‘646 patent was invalid and could not support an infringement claim.  SCA sent no further correspondence to First Quality regarding the ‘646 patent, and First Quality began marketing and selling the accused product.  Id. In July 2004, SCA asked the Patent and Trademark Office (PTO) to reexamine its ‘646 patent in view of First Quality’s ‘649 patent.  In March 2007, the PTO held SCA’s ‘646 patent valid over First Quality’s ‘649 patent.  Id. In August 2010—seven years… Read More »Laches Is a Defense to Patent Infringement No More

Objectively Reasonable Defenses Do Not Preclude Finding of Willful Patent Infringement

The Federal Circuit has held that even if an accused infringer’s defenses to patent infringement are objectively reasonable, Supreme Court precedent does not preclude a willful infringement finding, or enhancing damages.  WBIP, LLC v. Kohler Co., Nos. 2015-1038, 2915-1044 (Fed. Cir. July 19, 2016). In WBIP, the district court decided the willful infringement question under the Federal Circuit’s Seagate standard.  Under Seagate, proof of willful infringement required “clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent” and that “this objectively-defined risk . . . was either known or so obvious that it should have been known.”  In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007).  The jury found that WBIP had proven by clear and convincing evidence that Kohler’s infringement was willful, and the trial judge concluded that Kohler’s defenses at trial were objectively unreasonable, enhancing WBIP’s damages by 50%. Kohler appealed, arguing the Federal Circuit should reverse the willful infringement judgment for two reasons.  First, that its invalidity defenses to the patents in suit—obviousness and lack of written description—were objectively reasonable.  Second, that WBIP did not present evidence to the jury that Kohler… Read More »Objectively Reasonable Defenses Do Not Preclude Finding of Willful Patent Infringement

PTAB Grants Request for Re-hearing from Denial of Petition to Institute Inter Partes Review

Requests to the Patent Trial and Appeal Board for rehearing of decisions on Petitions for Inter Partes Review are commonplace.  PTAB decisions summarily denying them are as well.  In AVX Corporation v. Greatbatch, Ltd., IPR2015-00710, Paper 13 (Jan. 13 2016), however, a Petitioner succeeded in convincing a PTAB panel to reverse itself (in part) on its earlier decision denying institution of inter partes review. In AVX, Petitioner sought inter partes review of claims 1-20 of U.S. Patent No. 7,327,553.  The Board denied the petition in all respects.  The Petitioner filed a Request for Rehearing.  A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).  “The burden of showing a decision should be modified lies with the party challenging the decision.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). Each of the ‘553 patent’s claims required a “laminar delamination gap.”  In the decision denying institution, the Board denied both the Petitioner and Patent Owner’s proposed constructions of the term,… Read More »PTAB Grants Request for Re-hearing from Denial of Petition to Institute Inter Partes Review

USPTO Holds First-Ever Inter Partes Review Hearing in Midwest Regional Office in Detroit

Back in 2012, the U.S. Patent and Trademark Office officially opened its first satellite Office—the Midwest Regional Office—in Detroit, Michigan. In another first for the Detroit Regional Office, on January 11, 2016, the Office conducted the first oral hearings in an inter partes review proceeding outside of the Patent Office’s Alexandria, Virginia headquarters. A few observations: The Petitioner, Securus Technologies, Inc., and the Patent Owner, Global Tel*Link Corporation, were well represented by counsel. Those in attendance appeared split on the likely outcome. The Detroit Office, like the other regional Patent Offices, has only a single Hearing Room. The Hearing Room includes a bench that can accommodate three Administrative Patent Judges, two counsel tables, a lectern, a monitor for Judges appearing remotely, and space for a court reporter. The Hearing Room is tight quarters. The maximum number of publicly available spaces is perhaps 10. There is an overflow room that can accommodate additional members of the public, but they must watch the hearing via monitor. Administrative Patent Judge Beverly Bunting was on the bench live, while Judges Patrick Boucher and Kevin Turner appeared remotely. The Judges were active in questioning counsel. All appeared well familiar with the issues. Dr. Christal Sheppard,… Read More »USPTO Holds First-Ever Inter Partes Review Hearing in Midwest Regional Office in Detroit

Different Patent Claim Terms Can Have Same Meaning

Courts will presume different meanings attach to different words when construing claim language. See, e.g., Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579 (Fed. Cir. 1996) (reversing lower court’s ruling that a “pusher assembly” and a “pusher bar” have the same meaning). But a recent Patent Trial and Appeal Board decision construed the claim terms “permeation barrier” and “substantially impermeable barrier” to “refer to essentially the same thing.” Air Liquide Large Indus. U.S. LP v. Praxair Tech., Inc., IPR2015-01075, Paper 11 at 8 (Oct. 26, 2015). In Air Liquide, Petitioner sought inter partes review of U.S. Patent No. 8,690,476 claims 1-12 and 15. Independent claim 1 of the ‘476 patent includes a step of “maintaining the stored hydrogen at a pressure between [certain limits], whereby the salt cavern forms a substantially impermeable barrier to the stored hydrogen therein.” In contrast, independent claim 12 includes a step of “forming a permeation barrier . . . so as to prevent substantially all of the stored hydrogen from passing therethrough.” Id. at 5. The ‘476 patent specification defined a “permeation barrier” as a salt cavern that when pressurized or thermally activated, would restrict the passage of hydrogen flow through the… Read More »Different Patent Claim Terms Can Have Same Meaning

Suit Tossed on Alice Grounds Does Not Merit Attorneys Fees Under Octane Fitness

A California district court recently considered the intersection between the patent-eligibility law of Alice and the fee award standard of Octane Fitness, set against the backdrop of a (mostly) successful challenge to the patent-in-suit’s claims before the Patent Trial and Appeal Board.  In Credit Acceptance Corp. v. Westlake Servs., LLC, No. CV 13-01523 SJO (MRWx) (C.D. Cal. Nov. 2, 2015), Plaintiff sued Defendants alleging infringement of U.S. Patent No. 6,950,807, entitled “System and Method for Providing Financing.” One of the Defendants filed a Covered Business Method (CBM) petition seeking post-grant review of all of the ‘807 patent.  The Defendant argued that the claims were either unpatentable or invalid under 35 U.S.C. §§ 101, 112 ¶ 1 and 112 ¶ 2.  Shortly thereafter, the Defendants moved to stay the district court case. The court granted the stay motion.  At the time, the Supreme Court had granted certiorari to review the Federal Circuit’s decision in Alice, but hadn’t issued an opinion on the matter.  While the court acknowledged that the law on patentability under 35 U.S.C. § 101 was in flux, “the possibility of guidance lies on the horizon.” The PTAB granted the Defendant’s petition to review some but not all of… Read More »Suit Tossed on Alice Grounds Does Not Merit Attorneys Fees Under Octane Fitness

Federal Circuit Will Not Allow Mandamus Relief Of PTAB Decisions To Initiate Inter Partes Review

In In re The Procter & Gamble Company. LLC, No. 121 (Fed. Cir. Apr. 24, 2014), Clio filed a declaratory judgment action against Procter & Gamble (“P&G”), asserting three P&G patents were invalid.  After unsuccessfully moving to stay an already-pending P&G lawsuit for patent infringement against a Clio customer, Clio dismissed its complaint without prejudice under Federal Rule of Civil Procedure 41(a)(1)(B).  Id. at 3. Later, Clio petitioned the Patent Office’s Trial and Appeal Board (“PTAB”) for inter partes review of the same P&G patents that were the subject of its declaratory judgment complaint.  P&G argued the petitions should be dismissed under 35 U.S.C. § 315(a) as barred by Clio’s earlier-filed declaratory judgment lawsuit.  The PTAB granted them nevertheless.  Id. Section 315(a) states, “[a]n inter partes review may not be instituted if, before the date upon which the petition for such review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.”  According to the PTAB, however, “because Clio’s declaratory-judgment action was dismissed without prejudice, ‘[i]n the context of § 315(a)(1), the action never existed.’”  Id. at 3-4. The Federal Circuit denied P&G’s mandamus request.  Per the court,… Read More »Federal Circuit Will Not Allow Mandamus Relief Of PTAB Decisions To Initiate Inter Partes Review