Full text of the decisions are available here.
On Jan. 11, 2018, the PTAB designated two decisions as informative involving 35 USC 315(b). Luv N' Care, Ltd. v. McGinley, IPR2017-01216 (PTAB Sept. 18, 2017) (Paper 13), Amneal Pharm., LLC v. Endo Pharm., Inc., IPR2014-00360 (PTAB June 27, 2014) (Paper 15). In Luv N' Care, the Board denied institution because payment was not received until after the date the petition was filed and the petitioner failed to show good cause for waiving the fee requirement. In Amneal Pharma, the Board determined that the petition was timely filed under 35 USC 315(b) because filing a motion to amend the complaint in district court, with an amended complaint attached, does not constitute service.
Full text of the decisions are available here.
On Jan. 8, 2018, the en banc court of the Federal Circuit held that the time-bar determinations under 35 USC 315(b) are appealable and overruled the court's 2015 ruling in Achates. Wi-Fi One, LLC v. Broadcom Corp., Nos. 2015-1944, -1945, -1946 (Fed. Cir. Jan. 8, 2018) (en banc) According to the Court, there was no clear and convincing indication of congressional intent barring judicial review of USPTO's action denying institution of inter partes review that are filed more than one year after the petitioner is served with a complaint for patent infringement.
Full text of the opinion is available here.
On Nov. 20, 2017, the Federal Circuit reversed the lower court's judgment of invalidity for indefiniteness on the grounds that the intrinsic or extrinsic evidence failed to support indefiniteness. BASF Corp. v. Johnson Matthey Inc., No. 2016-1770 (Fed. Cir. Nov. 20, 2017). BASF, owner of patent directed to systems for performing catalytic conversion of nitrogen oxides in exhaust gas streams, sued Johnson Matthey for infringement. The district court held that the asserted patent was invalid because the "effective to catalyze" language is indefinite and accordingly, entered a judgment of invalidity of all claims.
On appeal, BASF argued that the "composition...effective to catalyze" has a plain and ordinary meaning and it is not indefinite because a person of ordinary skill in the art would understand it to be "composition capable of catalyzing" based on the specification. Johnson Matthey argued that the "effective to catalyze" is indefinite because the language is functional and there are limitless number of materials that can catalyze ammonia oxidation or SCR reactions.
In reversing the district court's judgment, the Federal Circuit reasoned that the Nautilus standard of "reasonable certainty" does not preclude defining a claim term by its function, that the specification provides exemplary material compositions that are effective to catalyze, and that objective tests to determine the effectiveness of the catalysts were available and well known at the time. Based on the intrinsic and extrinsic evidence, the Federal Circuit held that the claims of the asserted patent were not indefinite.
On Nov. 16, 2017, the USPTO issued new procedures for cases remanded from the Federal Circuit. The Standard Operating Procedure (SOP) provides guidance for panels in preparing for remand meetings and guidance to parties on remand procedures. The potential topics for such remand meetings may include the procedural history, issues on remand, any contemplated procedures for the proceedings on remand, and policy considerations. The SOP suggests parties in remanded trial cases are to contact the Board within 10 days and encourages parties to seek agreement on, among others, additional briefing, length of briefing, subject matter limitations on briefing, and briefing schedule. Full text is available here.
On November 15, 2017, the Federal Circuit ruled that the U.S. Supreme Court's decision in TC Heartland was an intervening change in the law that excuses waiver of venue objection. In re Micron Tech., Inc., No. 2017-138 (Fed. Cir. Nov. 15, 2017). Harvard College filed a patent infringement suit against Micron and Micron filed a 12(b)(6) motion to dismiss for failure to state a claim but failed to object to venue under 12(b)(3). Subsequent to the TC Heartland decision, Micron filed a 12(b)(3) motion for improper venue. The federal district court of Massachusetts denied the motion concluding that under FRCP 12(g)(2) and (h)(1)(A), Micron had waived its venue defense and TC Heartland was not a change of law that would make the waiver rules inapplicable. Micron filed a writ of mandamus to the Federal Circuit requesting reversal of the district court's order, dismissal of the suit for improper venue or transfer to the Delaware or Idaho.
In granting Micron's petition, the Federal Circuit concluded that TC Heartland was an intervening change of law and therefore, the waiver rules were inapplicable. The Court reasoned that for FRCP 12(g)(2) to apply, and for the unmade venue defense to be waived under FRCP 12(h)(1)(A), the venue defense had to be "available" to the defendant at the time the 12(b) motion is filed, and such venue objection was unavailable until TC Heartland. Full text of the order is available here.
ALJ McNamara recently granted Respondent ARRIS' motion to compel deposition of Complainant Sony's corporate witnesses in the U.S. Certain Digital Cable and Satellite Products, Inv. No. 337-TA-1049, Order No. 10. ALJ acknowledged the problem of having the depositions in Japan, particularly the law prohibiting the taking of testimony via telephone that prevented Staff's participation. Sony requested clarification or in the alternative, for interlocutory review of the order. Sony offered other locations for deposition including Hong Kong, Guam, and Hawaii. ARRIS requested the location to be Washington, DC or any reasonably accessible East Coast location. In granting ARRIS' request, ALJ explained that Sony's position is inconsistent with prior argument that Order 10 marked a "significant departure from well-established Commission practice." Order No. 14. ALJ McNamara's order limiting the deposition location to Washington, DC or other East Coast location for Japanese witnesses may impact how overseas depositions are handled in ITC matters.
On Nov. 14, 2017, the USPTO issued a final rule revising certain patent fees including increasing the fees for inter partes review. Effective Jan. 16, 2018, the PTO will increase a majority of fees including filing fees for utility patents, patent search filing fees, post allowance fees and PTAB fees. The IPR review request fee for up to 20 claims will be $15,500 and IPR post-institution fee for up to 15 claims will be $15,000. More information is available here.
On Nov. 7, 2017, the USPTO issued a final rule, set to take effect on December 7, 2017, on attorney-client privilege for PTAB trials. Under the rule, communications between a client and a USPTO patent practitioner/foreign jurisdiction patent practitioner will be privileged just as attorney-client communications. 37 CFR 42.57. Information on the final rule is available here.
On October 24, 2017, the PTAB designated three opinions that address 35 USC 325(d) as informative opinions. See Unified Patents, Inc. v. Berman, IPR2016-01571 (PTAB Dec. 14, 2016) (Paper 10); Hospira, Inc. v. Genentech, Inc., IPR2017-00739 (PTAB July 27, 2017) (Paper 16); Cultec, Inc. v. Stormtech LLC, IPR2017-00777 (PTAB Aug. 22, 2017) (Paper 7). In Unified Patents, the Board denied institution because the petitioner asserted an obviousness combination that included a reference the examiner considered during prosecution and a second reference that was cumulative prior art. In Hospira, the Board denied institution because the examiner considered during prosecution the same arguments the petitioner raised regarding patent owner's claim to priority and examiner's determination was dispositive as to asserted grounds of unpatentability. In Cultec, the Board denied institution because (i) the examiner previously considered two of the asserted references; and (ii) two additional references relied upon were cumulative of prior art. Full text is available here.
There are numerous IP related review requests before the Supreme Court as its 2017-2018 term begins on October 2, 2017. Several petitions seeking review of IP issues have been filed with the Court. The Court will be hearing oral arguments in the upcoming term on the constitutionality of AIA trials in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712. For more on the list, please click here.
Disclaimer: The content in this blog is solely for informational purposes and does not constitute legal advice.