On March 20, 2019, the PTAB designated Ex Parte Smith, a decision that applies the revised guidance on the application of Section 101, as informative.
Full text of decision is available here.
Full text of decision is available here.
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On March 18, 2019, the PTAB designated three decisions as precedential, two decisions relating to oral arguments and one decision on motion to amend.
Motion to Amend Amazon.com, Inc. v. Uniloc Luxembourg S.A., IPR2017-00948 (PTAB Jan. 18, 2019) (Paper 34): In the context of a motion to amend, Section 311(b) does not preclude Petitioner from raising, or the Board from considering, other grounds of unpatentability, including Section 101, as to substitute claims not yet part of a patent. The Board explained that Aqua Products shifted the burden from the patent owner on patentability in a motion to amend but did not foreclose analysis of whether substitute claims complied with Section 101. Oral Argument: The following two decisions are related to testimony at oral arguments. K-40 Electronics, LLC v. Escort, Inc., IPR2013-00203 (PTAB May 21, 2014) (Paper 34): Factors that may be considered in determining whether to permit live testimony. In granting the motion to present live testimony from the named inventor, the panel elucidated the following factors: (1) whether demeanor of witness may be critical to assessing credibility; (2) whether witness is principal fact witness; and (3) whether witness testimony may be case-dispositive DePuy Synthes Products, Inc. v. MEDIDEA, LLC, IPR2018-00315 (PTAB Jan. 23, 2019) (Paper 29): Testimony of an inventor at the oral hearing is considered new evidence, and not permitted, if a declaration from the inventor has not been previously provided. In referring to the Trial Practice Guide, the decision states that "[a] party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted." On March 7, 2019, PTAB designated a decision on motion to amend as precedential. Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, 01130 (PTAB Feb. 25, 2019) (Paper 15): This decision sets forth the requirements and burden for a motion to amend. A motion to amend may cancel and/or propose substitute claims; the substitute claim will be treated as contingent and considered only if a preponderance of evidence establishes that the original claim was unpatentable. The burden of persuasion is on the petitioner to show proposed substitute claims are unpatentable and the Board determines unpatentability by preponderance of the evidence based on the entire record. Motion may propose reasonable number of substitute claims and must explain if more than one substitute claim per challenged claim. Patent owner must respond to ground of unpatentability involved in the trial. Motion may not present substitute claims that enlarge the scope or introduce new matter. Motion must include a claim listing reproducing each proposed substitute claim and the motion, as well as any opposition, is limited to 25 pages while reply and sur-reply are limited to 12 pages. All parties have a duty of candor including patent owner's duty to disclose any material to patentability of substitute claims. The decisions are available here. A Federal Circuit panel reversed a district court's grant of motion for judgment on pleadings that the asserted claims were patent ineligible because the appellee's proposed claim constructions failed to render the claims invalid. Natural Alternatives Int'l v. Creative Compounds, LLC, No. 2018-1295 (Fed. Cir. Mar. 15, 2019). Natural Alternatives is the owner of patents relating to dietary supplements containing Beta-alanine, an amino acid, that helps to increase the anaerobic working capacity of muscle. Natural Alternatives sued Creative Compounds and the S.D. Cal. court granted Creative's motion for judgment on pleadings under Rule 12(c) holding that the asserted claims lacked inventive concept rendering them patent ineligible. Using the proposed claim constructions of Natural Alternatives, the district court held the asserted claim 1 is directed to the natural law because "ingesting certain levels of beta-alanine, a natural substance, will increase the carnosine concentration in human tissue and, thereby, increase the anaerobic working capacity in a human." Claim 1 recited, in part, "effective to increase beta-alanylhistidine dipeptide synthesis in the tissue...wherein the amino acid is provided through a dietary supplement." In reversing the district court, the Federal Circuit panel consisting of Judges Moore, Reyna and Wallach reasoned that the asserted claims are "treatment claims" and administering certain quantities of beta-alanine results in specific physiological benefits for athletes engaged in intensive exercise and the claims embodies this discovery requiring administration of certain dosage. Judge Reyna concurred with the panel's decision to reverse the district court's grant of motion for judgment but dissented from the majority's Section 101 analysis.
Full text of the opinion is available here. On March 13, 2019, PTAB designated Proppant, a decision involving same party and issue joinder, as precedential.
Proppant Express Investments, LLC v. Oren Techs., LLC, IPR2018-00914 (PTAB Mar. 13, 2019) (Paper 38): On March 3, 2019, the Federal Circuit reversed the PTAB's IPR decision that held the challenged claims as obvious. Personal Web Tech., LLC v. Apple, Inc., No. 2018-1599 (Fed. Cir. March 8, 2019). Apple filed an IPR petition against US7,802,310 asserting multiple grounds of unpatentability. Board issued a final written decision concluding that Apple had demonstrated by a preponderance of evidence that the challenged claims were obvious in view of prior art references. The '310 patent is directed to a system that uses content-based identifiers for various purposes in data processing systems.
Full text of the opinion is available here. |
Disclaimer: The content in this blog is solely for informational purposes and does not constitute legal advice.
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