USPTO Post-Issue Proceedings

Federal Circuit Finds Fault in PTAB’s Determination of Obviousness Without Proper Notice

In Nike v. Adidas (Fed. Cir. April 9, 2020) (precedential), the Federal Circuit addressed the notice provisions of the Administrative Procedures Act (APA) as they relate to the Patent Trial and Appeals Board (PTAB or Board) determination in an inter partes review (IPR) proceeding. Specifically, this precedential decision held that notice is required when the PTAB advances a novel theory of unpatentability. Originally, Adidas filed a petition for inter partes review of a patent owned by Nike. After the petition was granted, Nike filed a motion to amend requesting cancellation of a number of claims and entry of substitute claims. This decision centered around dependent claim 49, which recited, in part, “second stitch configuration forms a plurality of apertures in the flat knit textile element, the apertures formed by omitting stitches in the flat knit textile element and positioned in the upper for receiving laces.” In determining that claim 49 was unpatentable as obvious, the Board reasoned that “the entirety of the record demonstrates the unpatentability of substitute claim 49 by a preponderance of the evidence.” The Board’s conclusion was based on a theory that was not originally presented within the original petition or petitioner’s filings opposing the substitute claims… Read More »Federal Circuit Finds Fault in PTAB’s Determination of Obviousness Without Proper Notice

Federal Circuit Says No to PTAB’s IPR Joinder Approach

In a highly anticipated Patent Trial and Appeal Board (PTAB) decision, the Federal Circuit ruled that the PTAB erred in allowing Facebook to join itself to a PTAB proceeding in which it was already a party. This decision focused on the interpretation of 35 U.S.C. § 315(c), which relates to the Patent Office’s ability to join a party in an inter partes review (IPR) proceeding. More specifically, the statute states: (c) Joinder.— If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. The Patent Office filed a brief with the Federal Circuit in September 2019 urging the Federal Circuit to accept the PTAB’s Precedential Opinion Panel’s (POP) as long as the POP’s interpretation was reasonable. More specifically, the Patent Office argued that its precedential panel opinions interpreting the America Invents Act (AIA) were entitled to Chevron deference (the particular POP decision… Read More »Federal Circuit Says No to PTAB’s IPR Joinder Approach

Written Decision Needed For IPR Estoppel

In Finjan, Inc. v. Cisco Systems, Inc. Case No. 17-cv-00072-BLF (N. D. Cal. Feb. 3, 2020) the Northern District of California denied Plaintiff Finjan’s motion for summary judgement of validity of a number of claims of various patents asserted against defendant Cisco. Finjan’s arguments were centered around a pair of petitions for inter partes review filed by Cisco, and the court’s denial articulates the applicably of estoppel in situations where petitions are denied institution. The pair of petitions at the center of Finjan’s arguments were filed with the PTAB by Cisco after Finjan had sought enforcement of a few of its patents. The patents at issue had been subject to, and survived, challenges at the PTAB and Federal Circuit. Cisco was not a party to, or identified as a party of interest in, the previous challenges. The PTAB denied institution of the pair of petitions filed by Cisco. In addition to the petitions, Cisco challenged the validity of Finjan’s patents in the district court case. The invalidity theories presented in the district court were different than those of the IPR petitions – namely, they used different art and relied on expert testimony. Finjan’s primary argument pieced together Cisco’s use of… Read More »Written Decision Needed For IPR Estoppel

§ 112 Enablement and Written Description in Post-Grant Review

When are written description and enablement requirements of 35 U.S.C. § 112 met, and what is a Petitioner’s burden of showing those requirements are not met in a PTAB proceeding? In Instrumentation Laboratory Co. v. Hemosonics LLC, the Patent Trial and Appeal Board (PTAB) denied institution of post-grant review of U.S. Patent 9,977,039 (“the ‘039 patent”). The PTAB declined institution because if found that Instrumentation Laboratory Co. (“Petitioner”) didn’t meet its burden of proof to support the challenges under 35 U.S.C. § 112 it was alleging against the ‘039 patent. Hemosonics LLC (“Patent Owner”) is the owner of the ‘039 patent, which is directed toward devices, systems and methods for evaluating hemostasis of blood. The invention uses test chambers for holding blood, and “transducers associated with each of the plurality of test chambers in the interrogation of the test sample.” ‘039 Patent, claim 1 (identified as representative by the PTAB). The ‘039 patent issued from a continuation application filed on July 7th, 2017.  The ‘039 patent is a continuation of a series of a US patent application and prior US provisional application having priority dates of Feb. 15, 2012 and Feb. 15, 2011, respectively (“priority applications”). Remember, post-grant review is… Read More »§ 112 Enablement and Written Description in Post-Grant Review

Patent Owner Loses under § 101 in CBM Where Claims Not Limited to Technological Innovation Allegedly Disclosed in Patent Specification

All claims of a patent directed to a “security-based order processing technique” are unpatentable under 35 U.S.C. § 101, said the Patent Trial and Appeal Board (PTAB) in a final written decision in a Covered Business Method Review. Miami Int’l. Holdings, Inc. v. NASDAQ, Inc., CBM2018-00030, Patent 7,921,051 B2 (PTAB October 3, 2019). The decision is instructive for two reasons. First, the Patent Owner made unsuccessful arguments that elements described in the specification but not explicitly claimed somehow breathed a patentable technological innovation into the claims. Second, the PTAB continues to explicitly rely on the USPTO’s 2019 revised § 101 guidance that has been questioned, and even disregarded, by the Federal Circuit. The CBM proceeding had been instituted for all claims (1-49) of the ’051 patent, solely on the issue of patent-eligibility under 35 U.S.C. § 101. The PTAB considered independent claim 13 to be illustrative: A computer implemented method of routing securities orders in an electronic market, the method comprising: accessing, by one or more computer systems a configurable look-up table stored in a computer storage medium, in response to a received order involving a specific security, the configurable look-up table including assignment entries that assign each of a… Read More »Patent Owner Loses under § 101 in CBM Where Claims Not Limited to Technological Innovation Allegedly Disclosed in Patent Specification

Limits on Obviousness – Beyond the Claim Elements

Here is a lesson on obviousness. The Federal Circuit agreed with the Patent Trial and Appeal Board (PTAB) that claims for a system to measure degradation of cooking oils in a deep fryer were non-obvious under 35 U.S.C. §103. The PTAB had found that a skilled artisan would not have been motivated to combine the identified references, and that secondary evidence provided by the patentee supported non-obviousness. The court agreed in Henny Penny Corp. v. Frymaster LLC, No. 2018-1596 (Fed. Cir., September 12, 2109). Henny Penny Corporation’s (HPC) appeal was from the PTAB’s Inter Partes Review final decision Henny Penny Corp. v. Frymaster L.L.C., No. IPR2016-01435, 2017 WL 6551237(P.T.A.B. Dec. 21, 2017) holding claims 1-3, 5-12, 17-21 and 23 of U.S. Patent 8,497,691 not unpatentable as obvious. Background This case relates to measuring total polar materials (TPMs) that build up in aging cooking oil. High TPM levels in cooking oil indicate that the oil is degraded. Representative claim 1 of the ‘691 patent recites: A system for measuring the state of degradation of cooking oils or fats in a deep fryer comprising: at least one fryer pot; a conduit fluidly connected to said at least one fryer pot for transporting… Read More »Limits on Obviousness – Beyond the Claim Elements

State Universities Not Entitled to Sovereign Immunity from IPRs

Sovereign immunity does not exempt state governments from inter partes review, according to a Federal Circuit decision issued on Friday in Regents of the University of Minnesota v. LSI Corp. The decision extends the Federal Circuit’s earlier decision in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals that Native American tribes cannot rely on sovereign immunity against an IPR. This case began with the University of Minnesota suing semiconductor supplier LSI and customers of telecommunications company Ericsson for infringement. LSI and Ericsson responded with inter partes review petitions. Despite Minnesota’s status as a public university, that is, part of the state government of Minnesota, the Patent Trial and Appeal Board ruled that sovereign immunity did not prevent the IPR petition from being instituted. The decisions to institute the IPRs was appealed immediately to the Federal Circuit. Pharmaceutical company Gilead, facing a similar situation, successfully intervened in the appeal. While the appeal was pending, the Federal Circuit issued its decision in Saint Regis. In that case, the Federal Circuit ruled that tribal sovereign immunity did not prevent institution of an IPR against a patent owned by the Saint Regis Mohawk tribe. The court decided that IPRs were closer to agency enforcement actions,… Read More »State Universities Not Entitled to Sovereign Immunity from IPRs

Lack of Technical Solution in Patent Claims Justifies CBM Review and Alice Ineligibility

Finding that claims of patents directed “to a graphical user interface (‘GUI’) for electronic trading” lacked a technical solution to a technical problem, the Federal Circuit affirmed a Patent Trial and Appeal Board decision holding the claims ineligible under 35 U.S.C. § 101 and the Mayo/Alice test. Trading Technologies International, Inc. v. IBG, LLC, No. 2018-1063 (Fed. Cir. April 18, 2018) (opinion by Judge Moore, joined by Judges Mayer and Linn) (precedential). Interestingly, the court found that the patents’ lack of a technical solution supported both the institution of Covered Business Method (CBM) review, as well as the conclusion that the patent claims were ineligible. The CBM had addressed U.S. Patent Nos. 7,533,056, 7,212,999, and 7,904,374. The patent owner argued that the patents were directed to “technological inventions” within the meaning of America Invents Act § 18(d)(1), and that therefore the CBM had been improperly instituted. Addressing first the ’056 and ’999 patents, their invention was an “intuitive graphical user interface” that “makes the trader faster and more efficient, not the computer,” which was “not a technical solution to a technical problem.” (Emphasis in original.) And the court agreed with the PTAB that the ’374 patent did not solve the… Read More »Lack of Technical Solution in Patent Claims Justifies CBM Review and Alice Ineligibility

PGR Gives a Second Bite at Patent-Ineligibility

Recent PTAB decisions on petitions for Post-Grant Review (PGR) demonstrate how little deference judges can give to patent examiners patent-eligibility decisions.  Even if the USPTO in the form of a patent examiner has deemed claims patent-eligible under 35 U.S.C. § 101 and the Alice/Mayo test, the USPTO in the form of the PTAB may turn around and deem the claims unpatentable under Section 101 . Two recent cases saw the Patent Owner make the argument that it needs to make under 35 U.S.C. § 325(d), namely that the Petitioner was simply rehashing arguments already rejected by a patent examiner. These arguments were to no avail. As the PTAB receives more and more petitions for Post-Grant Review on Section 101 grounds, we may see the PTAB second-guess the examining corps regarding the patent-eligibility of more and more recently-issued patents. In Supercell Oy v. Gree, Inc., Case PGR2018-00061, Patent 9,700,793 B2 (PTAB Oct. 16, 2018), the PTAB granted a petition to institute a Post-Grant Review on grounds including Section 101. Claims of US Patent No. 9,700,793 are directed to updating state information in game screens. Under part one of the Alicetest, the Petitioner identified the “abstract idea of generating and outputting information relating to game screen(s)… Read More »PGR Gives a Second Bite at Patent-Ineligibility

Supreme Court Upholds IPRs in Oil States

On Tuesday, the Supreme Court released its opinion in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, holding that the inter partes review procedure does not violate Article III of the Constitution. The Court maintained the status quo, and IPRs are still a viable route for defending against or attacking a patent. The path to the Supreme Court began with an infringement suit. Oil States and Greene’s compete in supplying equipment for oil and gas extraction, and Oil States sued Greene’s for infringing U.S. Patent No. 6,179,053, which covers a wellhead for hydraulic fracturing. Greene’s—like many defendants—petitioned the Patent Trial and Appeal Board to institute an IPR and invalidate the ’053 patent. The PTAB did so, and the appeals climbed to the Supreme Court, winnowing to this Question Presented: “Whether IPRs violate the Constitution by extinguishing private property rights through a non-Article III forum without a jury.” In other words, is invalidating a patent the type of issue that must be heard by a court instead of an administrative agency? If so, must that court use a jury? (For additional background, check out my webinar discussing the briefing.) The Court answered “no” by a 7-2 margin, holding that… Read More »Supreme Court Upholds IPRs in Oil States