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On October 31, 2019, in a decision having far-reaching consequences to inter partes review, the Federal Circuit ruled that the appointment of judges to the Patent Trial and Appeal Board (PTAB) was unconstitutional. Arthrex, Inc. v. Smith & Nephew, Inc., No. 18-2140 (Fed. Cir. Oct. 31, 2019).
Full text of the opinion is available here.
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On April 5, 2019, PTAB designated the Huawei decision as precedential and the Chevron Oronite and Deeper decisions as informative. Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC, IPR2018-00816 (PTAB Jan. 8, 2019) (Paper 19); Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923 (PTAB Nov. 7, 2018) (Paper 9); Deeper, UAB v. Vexilar, Inc., IPR2018-01310 (PTAB Jan. 24, 2019) (Paper 7).
In Huawei, the PTAB provided guidance as to the procedure for submitting new evidence with a rehearing request and explained that a party must show good cause for submitting new evidence. In Chevron Oronite, the PTAB denied institution under Section 314(a) where the petitioner demonstrated a reasonable likelihood of prevailing only as to two claims out of 20 claims challenged. In Deeper, the PTAB denied institution under Section 314(a) where the petitioner demonstrated a likelihood of prevailing only as to two claims out of 23 claims challenged and only as to one of four asserted grounds of patentability. Full text of the decisions are available here. 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. 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. On Feb. 26, 2019, the Federal Circuit affirmed the district court's motion to dismiss for failure to state a claim because the asserted claims were invalid under Section 101. Univ. of Fla. Research v. General Elec. Co., 2018-1284 (Fed. Cir. Feb. 26, 2019). University of Florida, the owner of US 7,062,251 directed to managing critical care physiologic data using data synthesis technology, sued General Electric for infringement. GE filed a Rule 12(b)(6) motion to dismiss arguing that the patent claims are directed to ineligible subject matter. The N.D. Fla. court granted the motion and applying the Alice test determined the claims to be directed to an abstract idea and lacking an inventive concept. Univ. of Florida appealed arguing that sovereign immunity precludes a Section 101 challenge.
In affirming the district court's decision, the Federal Circuit held that (a) the district court had subject matter jurisdiction because the plaintiff waived its sovereign immunity by bringing an infringement action and Section 101 eligibility challenge is a defense to infringement, and (b) the patent claims are directed to abstract idea of "collecting, analyzing, manipulating, and displaying data". Full text of the opinion is available here. On Jan. 22, 2019, the U.S. Supreme Court unanimously affirmed Federal Circuit's decision regarding "on sale" bar under AIA's 35 USC 102(a)(1) by holding that the catchall phrase "otherwise available to the public" did not alter the meaning of "on sale." Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 586 U.S. ___ (2019). Petitioner Helsinn, a Swiss pharma, acquired rights to palonosetron, the active ingredient in Aloxi. Helsinn submitted protocols for Phase III clinical trials for 0.25mg and 0.75mg dose of palonosetron. Helsinn and MGI Pharma entered into a license agreement, and a supply and purchase agreement. Both agreements included the dosage information and MGI disclosed these agreements in its SEC 8K filing after redacting the dosage information. Two years thereafter, Helsinn filed a provisional patent application covering the above dosages and the asserted patent issued from an application filed on May 2013 claiming priority to the provisional application. Teva filed an ANDA and asserted that the patent was invalid because the 0.25mg dose was "on sale" more than one year before Helsinn filed the provisional patent application.
The district court concluded that the "on sale" provision did not apply because the public disclosure of the agreements did not disclose the dosages and therefore the invention was not "on sale" before the critical date. The Federal Circuit reversed concluding that "if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of sale" to fall within the AIA's on-sale bar. In affirming the Federal Circuit, the Supreme Court reasoned that the Court's precedence suggest that a sale or offer of sale need not make an invention available to the public and that "secret sales" can invalidate a patent. According to the Court, the phrase "on sale" had acquired a well-settled meaning when the AIA was enacted and that Congress did not intend to upset that precedent with the addition of a broad catchall phrase. The Court then held that Congress did not alter the meaning of "on sale" when it enacted the AIA and that an inventor's sale of an invention to a third party who is obligated to keep the invention confidential can qualify as a prior art under 35 USC 102(a). The takeaway from the Supreme Court's decision is that secret sales can be prior art. Any patent application filing must consider the date of such sales for prior art purposes. Full text of the opinion is available here. On Jan. 14, 2019, the Federal Circuit vacated the Trademark Trial and Appeal Board's (TTAB) affirmance of an examiner's refusal to register the mark "GUILD MORTGAGE COMPANY" because TTAB failed to consider all of the evidence and arguments. In re Guild Mortgage Co., No. 2017-2620 (Fed. Cir. Jan. 14, 2019). Guild, a mortgage business, applied to register "Guild Mortgage Company" under class 36 for "mortgage banking services." Registration was refused due to likelihood of confusion between Guild's mark and mark "Guild Investment Management" registered in Class 36 for "investment advisory services." Examiner concluded a likelihood of confusion based on her findings that the marks, nature of services, and trade channels were similar and the Board affirmed the findings.
In vacating the Board's decision, the Federal Circuit enumerated the Du Pont factors that must be considered in a finding of likelihood of confusion, namely (1) the similarity/dissimilarity of marks in their entireties as to appearance, sound, connotation and commercial impression; (2) similarity/dissimilarity and nature of the goods/services as described in an application or registration or in connection with which a prior mark is in use; (3) similarity/dissimilarity of established likely-to-continue trade channels; (4) conditions under which and buyers to whom sales are made, i.e., "impulse" v. careful, sophisticated purchasing; (5) fame of prior mark (sales, advertising, length of use); (6) number and nature of similar marks in use on similar goods; (7) nature and extent of any actual confusion; (8) length of time during and conditions under which there has been concurrent use without evidence of actual confusion; (9) variety of good on which a mark is or is not used (10) the market interface between applicant and the owner of prior mark (11) the extent to which applicant has a right to exclude others from use of its mark on its goods (12) extent of potential confusion, i.e., whether de minimus or substantial (13) any other established fact probative of the effect of use. The court reasoned that the Board erred in failing to address Guild's argument and evidence related to DuPont factor 8. Particularly, Guild argued that the registrant and Guild have coexisted in business for over 40 years and operated in the same geographic market without any evidence of actual confusion. 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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