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
USPTO Post-Issue Proceedings
Federal Circuit Will Not Allow Mandamus Relief Of PTAB Decisions Not To Initiate Inter Partes Review
In In re Dominion Dealer Solutions. LLC, No. 109 (Fed. Cir. Apr. 24, 2014), Dominion petitioned the Patent Office Trial and Appeal Board (“PTAB”) to institute inter partes review of five patents. The PTAB denied them all. Dominion petitioned the Federal Circuit for a writ of mandamus. Id. at 2. The Federal Circuit denied Dominion’s request. As a preliminary matter, the court noted that a mandamus remedy “is a drastic one, to be invoked only in extraordinary circumstances.” Id. at 3. It requires petitioner to show a “clear and convincing indisputable right to relief.” Id. at 3-4. And, citing its decision in St. Jude, the court held Dominion had no “clear and indisputable” right to challenge the PTAB’s decision denying its petitions for inter partes review. The take away? A Virginia district court recently held that judicial review of a PTAB non-institution decision is not permitted under the Administrative Procedure Act, the Declaratory Judgment Act, or the mandamus statute applicable to district courts. Dominion Dealer Solutions, LLC v. Lee, No. 3:13CV699 (E.D. Va. Apr. 18, 2014). This, in combination with the Federal Circuit’s decisions in Dominion and St. Jude, suggest that the PTAB’s decision not to initiate inter partes review… Read More »Federal Circuit Will Not Allow Mandamus Relief Of PTAB Decisions Not To Initiate Inter Partes Review
In St. Jude Medical, Cardiology Div., Inc. v. Volcano Corp., No. 2014-1183 (Fed. Cir. Apr. 24, 2014), St. Jude sued Volcano for patent infringement. Volcano counterclaimed against St. Jude, asserting St. Jude was infringing a Volcano patent. Two years later, the district court dismissed all claims against St. Jude relating to the Volcano patent. Six months after that, St. Jude filed a petition for inter partes review of the Volcano patent. Id. at 3. The Patent Office Trial and Appeal Board (“PTAB”) denied St. Jude’s petition. According to the PTAB, Volcano’s counterclaim alleging patent infringement constituted a “complaint alleging infringement of the patent” within the meaning of § 315(b). Section 315(b) serves as a bar to instituting inter partes review of a patent if the petitioner was served with a complaint alleging patent infringement more than a year before. St. Jude appealed the denial of its petition to the Federal Circuit. The PTAB moved to dismiss. Id. at 3-4. The Federal Circuit granted the motion. The court pointed out that 35 U.S.C. § 318(a) only authorizes appeals to the Federal Circuit from “the final written decision” of the PTAB. Id. Likewise, 35 U.S.C. § 141(c) only authorizes an appeal from… Read More »Federal Circuit Will Not Allow Appeals Of PTAB Decisions Not To Initiate Inter Partes Review
On April 22, 2014, the Patent Trial and Appeals Board (“PTAB”) ruled that a design patent claim in U.S. Patent No. D617,465 (the ‘465 Patent) is unpatentable as obvious. Munchkin, Inc. v. Luv N’ Care Ltd., No. IPR2013-00072 at 2. The PTAB’s decision comes less than a year after the proceeding was initiated, and is the first time a design patent was subject to inter partes review. By way of background, in January 2012, Luv N’ Care sued Munchkin and Toys R Us in federal court for infringing the ‘465 patent. On December 12, 2012, Munchkin and Toys R Us filed a petition requesting inter partes review of the ‘465 patent’s claim. Munchkin and Toys R Us asserted that certain prior art (depicted below left) rendered the ‘465 patent claim (depicted below right) unpatentable as obvious. After construing the ‘465 claim, the PTAB applied the “ordinary observer” test, and determined there was a reasonable likelihood that the observer would view the designs as substantially the same, and, therefore, be deceived. On April 25, 2013, the PTAB granted Munchkin’s and Toys R Us’ petition for inter partes review. On April 22, 2014, less than a year later, the PTAB issued its… Read More »PTAB Invalidates First Design Patent in Inter Partes Review
Clouding IP is the assignee of U.S. Patent No. 6,738,799 (the ‘799 patent). The ‘799 patent is related to a method of file synchronization using a signature list. Clouding asserted the ‘799 patent in a host of lawsuits, including one against Google. More than one year after the Google case was filed, Unified Patents filed a petition to institute Inter Partes Review (IPR) of certain claims of the ‘799 patent. In granting the petition, the Patent Trial and Appeals Board (PTAB) rejected the patent owner’s argument that Google was a real-party-in-interest. Unified Patents, Inc. v. Clouding IP, LLC, Case IPR2013-00586, (PTAB March 21, 2014 (decision on institution of Inter Partes Review). Clouding had submitted a Patent Owner Preliminary Response, arguing that the IPR should not be instituted because Google, not Unified Patents, was the “real party in interest” under 35 U.S.C. § 312(a)(2). Because Clouding sued Google more than one year before the Petition was filed, Clouding argued that the Petition was barred under 35 U.S.C. § 315(b). In support of its argument, Clouding pointed to a Bloomberg Online article identifying Google as a founding member of Unified Patents. Clouding also pointed to another article claiming that Unified Patents “counters… Read More »Investors in a Separate Corporation that Files an IPR Petition Are Not Real-Parties-in-Interest
A court in the Eastern District of Texas has declined to stay litigation where the United States Patent and Trademark Office is conducting a “Covered Business Method” review of the patent-in-suit under Section 18 of the America Invents Act. VirtualAgility, Inc. v. Salesforce.com, Inc., Civil Action No. 2:13-cv-00011-JRG (E.D. Texas Jan. 9, 2014). The court succinctly summarized the procedural history prior to the defendants’ motion to stay: VirtualAgility filed suit on January 4, 2013 against Salesforce and the other Defendants for allegedly infringing U.S. Patent No. 8,095,413 (the “‘413 Patent”). On May 24, 2013, Salesforce filed a petition for Covered Business Method (“CBM”) review of the ‘413 Patent under the AIA. On May 29, 2013, all Defendants jointly filed the instant motion seeking a stay of proceedings pending the PTO’s final resolution of the CBM review. On November 19, 2013, the Patent Trial and Appeal Board (“PTAB”) granted Defendants’ petition and instituted a CBM review of all claims of the ‘413 Patent. In determining whether to grant a stay, the court considered the four factors laid out in the statute as follows, first noting that Congress did not include an automatic stay provision in the CBM transitional program. The first… Read More »Does a “Covered Business Method” Patent Review Warrant a Stay of Litigation?
A document can qualify as “prior art” under 35 U.S.C. § 102 even when the document is what one might charitably describe as barely publicly available, and even when the document is incomplete. In re Enhanced Security Research LLC, No. 2013-1114 (Fed. Cir. Jan 13, 2014). In this case, a divided Federal Circuit panel upheld an obviousness determination by the Patent Trial and Appeal Board (PTAB) that the combination of an incomplete product manual and a published academic article rendered a claimed invention obvious in the context of an ex parte re-examination proceeding. The majority, in an opinion authored by Judge Dyk, found that the product manual was sufficient even if incomplete, and qualified as “publicly available” based on a declaration stating that a purchaser of a software product could have requested the manual. Judge O’Malley dissented. The claims of United States Patent No. 6,119,236, as amended during re-examination, were directed to “a computer security device and method for preventing unauthorized individuals from gaining access to a local computer network.” A manual for a software product called NetStalker disclosed all claim elements except “the automatic assignment of different weights to different types of attempted security breaches.” The PTAB and the… Read More »When Is a Document Publicly Available (and Therefore Prior Art)?
The USPTO’s Patent Trial and Appeal Board (PTAB), in its first final decision on a Covered Business Method Patent Review, has invalidated claims of U.S. Patent No. 6,553,350 under 35 U.S.C. § 101. SAP America, Inc. v. Versata Development Group, Inc., Case No. CBM2012-00001 (MPT) (PTAB June 11, 2013). The claims of the ’350 patent were “directed to a method and apparatus for pricing products and services.” The purpose of the claimed invention was to simplify the prior art’s requirement for large data tables used to determine who (i.e., what customers) was purchasing what (i.e., what products). Accordingly, the ’350 patent claimed “arranging customers into a hierarchy of customer groups and products into a hierarchy of product groups.” The PTAB began its opinion by disagreeing with the patent owner’s argument that the Board’s use of the “broadest reasonable interpretation” standard was erroneous. In fact, the PTO has been using the standard for over a century in both pre-issuance and post-issuance proceedings. As with prior proceedings, the new AIA proceedings allow claims, which provide an important notice function, to be amended. Accordingly, “use of the broadest reasonable interpretation encourages patent owners to remove ambiguities and to narrow their claims by amendment,… Read More »PTAB Holds Claims Invalid Under 35 U.S.C. § 101 in Covered Business Method Review Proceeding
Do the estoppel provisions of the inter partes re-examination statute preclude a third party from relying on prior art in litigation where, after the third party has included the prior art in its request for inter partes re-examination, the USPTO has determined that the prior art does not present a substantial new question of patentability? The Federal Circuit, in dicta that some may find surprising, recently left this possibility open in a case decided under the inter partes re-examination provisions that applied prior to the America Invents Act taking effect on September 16, 2012. Belkin International, Inc. v. Kappos, No. 2012-1090 (Fed. Cir. Oct. 2, 2012). Further, this possible hole in the inter partes estoppel provision may also exist in the provision applicable to the post-September 16, 2012, inter partes review regime. The issue in this case was whether the (as of September 16, 2012, defunct) Board of Patent Appeals and Interferences “lacked jurisdiction to consider arguments based on three references that the Director [of the USPTO] had previously determined did not raise a substantial new question of patentability.” Belkin had filed its inter partes re-examination request alleging that four references raised ten substantial new questions of patentability concerning claims… Read More »Estoppel and Inter Partes Review of Patent Validity