Posts Tagged: "inter partes reexamination"

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday held that the Patent Trial and Appeal Board (PTAB) incorrectly found certain claims of SynQor, Inc.’s U.S. Patent No. 7,072,190 unpatentable as obvious in an inter partes reexamination proceeding. The CAFC said that the PTAB’s previous reexamination decisions on related patents gave rise to common law issue preclusion that collaterally estopped the Board from such a finding. Judge Hughes authored the majority opinion and Judge Dyk dissented, calling the ruling “without support and contrary to governing Supreme Court authority.”

On February 11, the U.S. Court of Appeals for the Federal Circuit (CAFC) granted Mojave Desert Holdings, LLC and U.S.A Dawgs Inc.’s (Mojave and U.S.A. Dawgs) motion to substitute in a case involving a design patent infringement issue between Mojave and Crocs, Inc. (Crocs). The court concluded that Mojave is the successor-in-interest to U.S.A. Dawgs, that it has standing to pursue the challenge to Crocs’ patent, and that the Board erred in not substituting Mojave for U.S.A. Dawgs as the third-party requester during the inter partes reexamination.

On October 16, the U.S. Patent and Trademark Office (USPTO) issued two decisions granting renewed petitions filed by patent owner VirnetX to terminate inter partes reexamination proceedings at the USPTO that were petitioned by consumer electronics giant Apple. The decisions terminating the reexaminations with respect to many of VirnetX’s patent claims are based on estoppel provisions arising from the previous adjudication of infringement findings against Apple upheld on appeal to the U.S. Court of Appeals for the Federal Circuit. VirnetX’s success on its recent petitions to terminate reexamination proceedings is the latest bit of positive news for the patent owner in a legal battle which has taken many turns since VirnetX won $368 million in a district court infringement case against Apple back in November 2014.

In Knauf Insulation, Inc. v. Rockwool International, the U.S. Court of Appeals for the Federal Circuit vacated and remanded the Patent Trial and Appeal Board’s determination in an inter partes reexamination that certain patent claims for two of Knauf’s patents covering fibrous products and related methods and binder and fiber glass products were obvious. The Court also found that certain other claims of the two patents were not unpatentable as obvious, and Rockwool International cross-appealed that determination, but the Court held that Rockwool did not have standing to cross-appeal and thus dismissed it. The decision was not precedential, but some have commented that the Court’s holding with respect to Rockwool’s lack of standing for a cross-appeal could have significant implications.

The United States Court of Appeals for the Federal Circuit last week affirmed-in-part, vacated-in-part, and remanded a decision of the Patent Trial and Appeal Board (PTAB) in the long-running case of VirnetX Inc. v. Apple Inc., Cisco Systems, Inc. The case relates to three inter partes reexaminations maintained by Apple and Cisco. The PTAB found that Apple could proceed with its reexaminations under the America Invents Act (AIA) and held that claims of VirnetX’s patent numbers 7,418,504 (“the ’504 patent”) and 7,921,211 (“the ’211 patent”) were unpatentable as anticipated/obvious. These patents were directed to methods for “establishing a secure communication link between [computers] over a computer network, such as the Internet” and are “built on top of the existing Internet protocol.” Basically, the patents claim a way to create secure communication links via domain name service (DNS) systems.

On Friday, November 9th, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in NuVasive, Inc. v. Iancu, which vacated certain findings of the Patent Trial and Appeal Board (PTAB) in an inter partes reexamination proceeding involving a NuVasive patent covering a system and methods for minimally invasive surgical procedures. The Federal Circuit panel of Circuit Judges Pauline Newman, Raymond Chen and Todd Hughes determined that on the issue of secondary considerations the PTAB erred in finding no nexus between NuVasive’s claimed method and the surgical procedure actually commercialized by NuVasive. The panel also held that further fact-finding was required in order to determine whether an asserted prior art publication teaches a certain nerve-monitoring technique necessary to support the Board’s determination of obviousness. Therefore, the decision of the PTAB was vacated and the case remanded for further proceedings consistent with the Court’s opinion.

The Federal Circuit recently issued an opinion affirming the Patent Trial and Appeal Board’s (“PTAB”) finding of obviousness of a hot-spot technology patent based on implicit disclosures in a prior art reference. Even though the reference did not expressly disclose the limitation at issue, the Board’s holding that a POSITA would, nonetheless, read the reference as implicitly describing the claimed configuration was supported by substantial evidence.

InvestPic filed a combined petition for panel rehearing and rehearing en banc on June 19, 2018, making two arguments. First, that the original decision must be vacated and remanded because the claims considered by the district court and the panel were surrendered as the result of two reexaminations that ultimately resulted in the original claims being lost, with new claims awarded in their place. Second, that the panel’s decision is alleged to be inconsistent with decisions of prior panels, which found claims lacking improvements in the physical-realm could still be patent eligible improvements. This second argument goes on to assert that the ruling of the panel would effectively preclude groundbreaking innovations in the field of data science to be considered patent eligible moving forward.

On Thursday, June 7th, the U.S. International Trade Commission (ITC) announced that it was instituting a Section 337 patent infringement investigation of automobile infotainment systems being imported into the U.S. based on infringement claims asserted by major semiconductor maker Broadcom. Broadcom is alleging that a group of Japanese automakers and tech companies, including Toyota, Panasonic and Denso Ten, over the sale of head units, rear seat entertainment units, units for displaying information or entertainment, as well as cameras and other processing components used in those units and the automobiles containing such units.

In 01 Communique Lab v. Citrix Systems, the Federal Circuit rejected Communique’s appeal. The court properly relied on a comparison of the allegedly infringing GoToMyPC product to the asserted patent claims, as shown by careful jury instructions. Citrix’s comparison to the BuddyHelp prior art, in aid of a legitimate defense, did not cause prejudice to Communique. In reaching its decision, the Court noted that claim terms must be construed the same way for both invalidity and infringement. Thus, if a narrow construction was appropriate for validity in the reexamination to avoid the prior art, a broader construction should not be applied against alleged infringers.

An IPR petition is not time-barred for reasons of privity with a district court defendant in a prior litigation when no evidence shows that the petitioner controlled the litigation and would be bound by its outcome, or was in privity with a litigant for other reasons. It is not enough for the petitioner to indemnify litigants or have an interest in the outcome. Similarly, for a district court defendant to be a real party in interest in an IPR, the petitioner must have filed the petition at the behest or on behalf of the defendant. Finally, it was not an abuse of discretion to deny Patent Owner’s motion for additional discovery, when the requested discovery would not prove privity on the grounds alleged in the motion.

While there has been much optimism due to the arrival of USPTO Director Andrei Iancu and his recent speeches signaling he understands the U.S. patent system must move along a different path, it is impossible to think that one man will be able to correct the collective mistakes of 535 elected Members of Congress and 9 ivy league educated jurists who seem convinced that forfeiting America’s patent system is somehow what the Constitution demands. His job just became much more difficult, and all the more important.

Earlier today, the US Supreme Court issued it’s highly anticipated 7 to 2 decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC which upheld the Constitutionality of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). SCOTUS applied the public rights doctrine to the government’s grant of a patent, finding that patent validity trials need not take place in an Article III court nor did they violate the Seventh Amendment, which ensures a person’s right to a jury trial. The majority opinion was authored by Justice Clarence Thomas. Justice Neil Gorsuch penned a dissent to which Chief Justice John Roberts concurred.

In Knowles Elecs. LLC v. Iancu, Knowles appealed the inter partes reexamination decision of the Board, which affirmed an examiner’s finding that certain claims were anticipated while other claims would have been obvious over various prior art references. The third-party requester declined to defend the judgment in its favor. The Director of the USPTO intervened to defend the Board’s decision, pursuant to 35 U.S.C. § 143. On appeal, the Court permitted the Director to intervene and affirmed the Board’s decision… Under current precedent and Article III challenges notwithstanding, in appeals from Board decisions in which the appellee has withdrawn, appellants should be prepared to argue against the Director in lieu of the withdrawn appellee. Further, such appellants should be prepared to rebut additional evidence which may be added to the record by the intervening Director.