USPTO Post-Issue Proceedings

Written Description Required to Claim Priority from a PCT

The Federal Circuit has clarified what written description is sufficient for a PCT application to qualify as a priority document for a U.S. Patent application. In Hologic, Inc. v. Smith & Nephew, Inc., No. 2017-1389 (Fed. Cir. Mar. 14, 2018) the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) decision finding that an earlier-filed PCT application (Publication No. WO 99/11184) provided sufficient written description to qualify as a priority document for U.S. Patent No. 8,061,359 under 35 U.S.C. §§ 112 and 120. The ‘359 patent is directed to an endoscope and is owned by Appellee Smith. The ‘359 patent issued from a divisional application of the national stage of the ‘184 PCT. The specification of ‘359 patent as originally filed and the ‘184 PCT application were nearly identical. The claims in the ‘359 patent recite a “light guide.” During prosecution of the ‘359 patent the Examiner objected to the drawings for failing to show the light guide. The specification was then amended during prosecution to state “[a] connection 8 for a light source is also present, for connection to a light guide, such as a fibre optics bundle which provides for lighting at the end of lens 13.”… Read More »Written Description Required to Claim Priority from a PCT

CBM Estoppel Limited to Substantially Identical References

A district court recently held the scope of estoppel from covered-business-method (CBM) review encompasses the references used in the CBM as well as almost-identical references. (Solutran, Inc. v. U.S. Bancorp et al. (D. Minn. 2018).) This dispute started with Solutran suing U.S. Bank for infringement of U.S. Patent No. 8,311,945. The ’945 patent covers a method of processing checks. U.S. Bank retaliated by petitioning for CBM review, claiming that the ’945 patent was obvious over admitted prior art in the patent and U.S. Patent App. No. 2005/0071283 to Randle. The Patent Trial and Appeal Board instituted review but eventually sided with Solutran. Solutran now argues that at trial, U.S. Bank cannot argue obviousness and cannot rely on a reference related to the Randle ’283 application. The estoppel provision for CBM reviews states that the “[p]etitioner … may not assert … in a civil action … that the claim was invalid on any ground that the petitioner raised during” the CBM review. (Pub. L. 112-27, § 18(a)(1)(D), 125 Stat. 330 (2011).) The scope is ostensibly narrower than estoppel from inter partes review or post-grant review, which cover “any ground that the petitioner raised or reasonably could have raised during” the review.… Read More »CBM Estoppel Limited to Substantially Identical References

When to Convert a CIP Patent Application into a Divisional

The Federal Circuit recently clarified the limits of the safe harbor provision of 35 USC §121. In In re: Janssen Biotech, Inc., New York University, No. 2017-1257 (Fed. Cir. Jan. 23, 2018), the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) decision affirming invalidity of claims of US Patent 6,284,471 under the doctrine of obviousness-type double patenting. As a reminder, § 121 states in part: If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. . . The ’471 patent issued from a continuation-in-part (CIP) patent application, no. 08/192,093.  The ’093 application claimed priority to multiple other applications, and was part of a somewhat complicated family of applications and patents, whose relationships are diagramed below. The ’471 patent was challenged in an ex parte reexamination under the doctrine of obviousness-type double patenting over US Patent 5,656,272 During the reexamination, and to overcome an obviousness-type double patenting… Read More »When to Convert a CIP Patent Application into a Divisional

Patent That Survived Alice Is Not Obvious

A little less than a year after finding that claims of U.S. Patent No. 6,474,159, directed to an inertial tracking system, were patent-eligible under the Alice abstract idea test, the Federal Circuit has affirmed a decision of the USPTO’s Patent Trial and Appeal Board (PTAB) that claims of the ’159 patent have not been shown to be obvious under 35 U.S.C. § 103.  Elbit Systems of America, LLC. v. Thales Visionix, Inc., No. 2017-1355 (Fed. Cir. Feb 6, 2018) (precedential) (opinion by Judge Wallach, joined by Judges Moore and Stoll). Dependent claim 3 of the ’159 patent was representative,  That claim, including base claims 1 and 2, recites: 1. A system for tracking the motion of an object relative to a moving reference frame, comprising: a first inertial sensor mounted on the tracked object; a second inertial sensor mounted on the moving reference frame; and an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors. 2. The system of claim 1 in which the first and second inertial sensors each… Read More »Patent That Survived Alice Is Not Obvious

No Estoppel for Art in Contentions but Not IPR Petition

Earlier this month in Koninklijke Philips N.V. v. Wangs Alliance Corp., Civil Action No. 14-12298-DJC (D. Mass. Jan. 2, 2018), the District of Massachusetts added another case to the majority view of the scope of inter partes review estoppel, deciding that Wangs could assert prior art included in invalidity contentions but omitted from a subsequent IPR petition. Philips had asserted infringement of seven patents: Patent Nos. 6,147,458; 6,250,774; 6,561,690; 6,586,890; 6,788,011; 7,038,399; and 7,352,138. In due course, Wangs filed invalidity contentions against the patents-in-suit, and at the one-year deadline, Wangs petitioned for IPRs. The PTAB granted the IPRs for six of the seven patents. While the court stayed the case, the PTAB handled the IPRs, ruling for Wangs on some claims but not others. In the immediate motion, Philips moved to prevent Wangs from relying on prior art left out of its contentions under local rules, and to estop Wangs from relying on prior art included in its contentions but not in its IPR petitions. Several courts have tackled the IPR estoppel issue, to differing results. Section 315(e) of Title 35 estops a party from raising “any ground that the petitioner raised or reasonably could have raised during that inter… Read More »No Estoppel for Art in Contentions but Not IPR Petition

Broad Claim Term Dooms Patent at PTAB

Last month, the Patent Trial and Appeal Board issued a final written decision in Bright House Networks v. Focal IP (IPR2016-01263), finding the telecommunications patent in question obvious based on a broad claim construction of “switching facility.” Like many inter partes reviews, this dispute started in district court. Multiple IPRs from the defendants followed: this petition against claim 1 of U.S. Patent No. 8,155,298, from Bright House Networks, WideOpen West Finance, Knology of Florida, and Birch Communications; another by the same parties against claim 20; a third by YMax against claims 1 and 20; and two more against related patents. The patents pertain to telecommunications, specifically to using a web-based interface to control aspects of a call through the public switched telephone network (PSTN). In the primary embodiment, a call passes through a central office to a tandem switch (as conventionally occurred in the PSTN), and web-based control of the call passes a tandem access controller to the tandem switch, affecting the call. Claim 1 provides “a method for providing user control selections for routing of one or more communications between users,” and the parties disagreed over the terms defining which components performed the methods, namely, “switching facility,” “coupled to,”… Read More »Broad Claim Term Dooms Patent at PTAB

Low Bar for USPTO to Show Motivation to Combine

A recent Federal Circuit case illustrates perils of trying to show that patent claims are non-obvious by arguing that references would not have been combined.  In Bosch Automotive Service Solutions. LLC v. Matal, No. 2015-1928 (Fed. Cir. Dec. 22, 2017) (non-precedential), the court affirmed a Patent Trial and Appeal Board (PTAB) finding of unpatentability, in an Inter Partes Review proceeding, of certain claims of U.S. Patent No. 6,904,796 (and, while not discussed in this post, also vacating the PTAB’s denial of the patent owner’s motion to amend certain claims).  The court agreed with the PTAB that there was a sufficient motivation to combine references to achieve a single tool for activating tire sensors where different references taught each of the various functionalities now claimed in a single tool. Independent claim 1 of the ’796 patent recites: A tool comprising a plurality of means for activating remote tire monitoring system tire sensors, the plurality of means selected from the group consisting of a magnet, a valve core depressor, means for generating continuous wave signals, and means for generating modulated signals, wherein the tool is capable of activating a plurality of tire sensors, each of the plurality of tire sensors utilizing a… Read More »Low Bar for USPTO to Show Motivation to Combine

Inter Partes Review Estoppel Extends to Non-Petitioned Grounds

Hewlett Packard Enterprises (“HP”), accused of infringing U.S. Patent No. 6,218,930 owned by Network-1 Technologies, Inc. (“Network-1”), was recently estopped from relying on certain references and combinations thereof to support arguments of patent claim invalidity.  Magistrate Judge K. Nicole Mitchell recommended granting a motion for Summary Judgment that HP was estopped under 35 U.S.C. §315(e)(2) from asserting the obviousness of the disputed claims over non-petitioned grounds that Judge Mitchell believed HP reasonably could have raised during an earlier inter partes review (“IPR”). Network-1 Technologies, Inc. v. Alcatel-Lucent USA, Inc., et al., C.A. No. 6:11-cv-492-RWS-KNM (E.D. Texas September 26, 2017). Network-1 filed suit against HP and several other Defendants on September 15, 2011.  HP served Network-1 with Invalidity Contentions, challenging the asserted claims as obvious or anticipated by four patent references. HP also joined with several of the other Defendants in filing an inter partes review petition.  At the request of the Defendants, the infringement trial was stayed pending the outcome of the inter partes review.  The inter partes review petition cited four patent references with only one of HP’s Invalidity Contention references being included.  Responsive to the inter partes review petition, the PTAB granted review on two grounds:  1. anticipation by… Read More »Inter Partes Review Estoppel Extends to Non-Petitioned Grounds

IPR Estoppel Remains Elusive for Patent Owners

In Finjan v. Blue Coat Systems, LLC, No. 15-cv-03295-BLF, (N.D. Cal. July 28, 2017), the court took the majority view on the scope of Inter Partes review estoppel, finding no estoppel for grounds of invalidity not included in a petition and for grounds of invalidity denied institution by the Patent Trial and Appeal Board. Finjan had sued Blue Coat, among several others, for infringement of several cybersecurity patents relating to “content-based security,” counteracting malicious code in downloaded files based on the behavior of the code rather than a maintained list of viruses and malicious code. Finjan’s enforcement campaign had spawned numerous IPR petitions before the PTAB. Blue Coat had joined four inter partes reviews filed by other defendants against U.S. Patent Nos. 8,677,494 and 8,225,408, which the PTAB instituted, with some claims of the ’494 patent and all claims of the ’408 patent surviving. Finjan moved for summary judgment that the grounds of invalidity left out of the petitions but raised in the litigation against the ’494 and ’408 patents should be estopped. Blue Coat had also filed its own IPR petitions against U.S. Patent Nos. 6,154,844; 6,965,968; 7,418,731; and 8,079,086, but the PTAB denied institution. Finjan moved for summary… Read More »IPR Estoppel Remains Elusive for Patent Owners

Analogous Patent Prior Art from Different Field of Endeavor?

If you are trying to disqualify a prior art reference as non-analogous in either patent prosecution or litigation, here is a case to remind you of limitations of such arguments. In Smartdoor Holdings, Inc. v. Edmit Industries, Inc., No. 2016-2152 (Fed. Cir. Sept. 7, 2017) (non-precedential), the Court affirmed an Inter Partes Review finding of the Patent Trial and Appeal Board (PTAB) that claims of U.S. Patent No. 6,484,784 were obvious over a combination of two prior art references. In so doing, the Court rejected the IPR petitioner’s argument that one of the references should have been disqualified as non-analogous patent prior art. The only independent claim of the ’784 patent at issue recites a door moved by an electric motor and including a generator configured such that moving the door from a first to a second position causes the generator to produce power to apply a braking force to slow movement of said door from said first position to said second position into power at least one auxiliary device. The reference relied upon to teach the braking force did not disclose a door, and therefore the petitioner argued it was non-analogous patent prior art. The Federal Circuit disagreed. One… Read More »Analogous Patent Prior Art from Different Field of Endeavor?