In In re Nuvasive, Inc. (Fed. Cir. Nov. 9, 2016) (Judges Moore, Wallach, and Taranto), the Federal Circuit considered two Board decisions with respect to U.S. Patent No. 8,187,334 (“the ’334 patent”). The Federal Circuit affirmed the Board’s final written decision in IPR2013-507 (“IPR507”), which invalidated all but one challenged claim, and vacated the Board’s
Nancy J. Linck
The PTAB Mistakenly Excluded Exhibit Showing Conception
In REG Synthetic Fuels (“REG”), the PTAB found anticipated all challenged claims 1-5 and 8 of U.S. Patent 8,231,804. These claims covered even-carbon-number paraffins and methods of making them. Claims 1, 3, 4, and 8 were found anticipated based on a U.S. patent to Craig, and claims 1-3, 5, and 8 were found anticipated based…
A Win for Patent Owners at the Federal Circuit on When the Cited Art is Not a Bar
In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., Olympus Medical Systems Corp., IPR2014-00233 (Fed. Cir. Nov. 15, 2016) (Judges Moore, Schall, and O’Malley), the Federal Circuit vacated and remanded the Board’s decision invalidating certain claims of U.S. Patent 6,030,384 (“’384 patent”). The Board’s decision was based on prior art under pre-AIA §102(a). This…
The PTAB Speaks Out on Analogous Art
On Final Written Decision in Pure Fishing, Inc. v. Globeride, Inc., the PTAB determined the Petitioner had failed to establish by a preponderance of the evidence that claims 1 and 2 of U.S. Patent 5,921,489 were unpatentable. The PTAB’s decision turned on the question of whether two cited references were “analogous to the claimed…
Limitations on the Scope of Appellate Review in the Aftermath of Cuozzo v. Lee
In Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., the Federal Circuit considered the impact of Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016) on the scope of appellate review of a PTAB decision to vacate an inter partes review institution decision and terminate the proceeding and concluded there…
The Federal Circuit Reaffirms Achates’ “Ultimate Authority to Invalidate” Test and Establishes a “Two-Part Inquiry” for Deciding Reviewability Husky Injection Molding v. Athena Automation, Nos. 2015-1726, -1727 (Fed. Cir. Sept. 23, 2016)
In Husky Injection Molding v. Athena Automation, the Federal Circuit has again refused to review a decision underlying the Board’s institution decision, in this case, whether the Petitioner was barred from filing an inter partes review petition based on assignor estoppel. As in Achates, the court concludes that it lacks jurisdiction to conduct…
PTAB’s Discretion to Deny Institution under 35 U.S.C. § 325(d)
Under 35 U.S.C. § 325(d), the Patent Trial and Appeal Board (“Board”) may “take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”[1] From seven Informative Decisions, in which the Board used its discretion under § 325(d)…
Guidance or Further Confusion for the PTAB on Claim Indefiniteness? Cox Communications, Inc. v. Sprint Communication Co. LP, No. 2016-1013 (Fed. Cir. Sept. 23, 2016)
In Cox Communications, Inc. v. Sprint Communication Co. LP, No. 2016-1013 (Fed. Cir. Sept. 23, 2016), the Federal Circuit reversed the district court’s determination that certain claims were indefinite under 35 U.S.C. § 112 ¶ 2 due to the phrase “processing system.” Id. at 3. The majority did so in a rather unique way,…
Section 315(b): Time for the Federal Circuit to Decide Its Reviewability En Banc? Wi-Fi One v. Broadcom, No. 2015-1944 (Fed. Cir. Sept 16, 2016)
The recent decision in Wi-Fi One v. Broadcom, has presented an interesting opportunity for the Federal Circuit to reconsider its jurisprudence on the reviewability of the PTO’s institution decision post-Cuozzo and in particular the application of the time bar set forth in 35 U.S.C. § 315(b). The language of 35 U.S.C. § 315(b)…
Claim Survives IPR Challenge Due to Indefiniteness
Activision Blizzard, Inc. v. Acceleration Bay, Inc. presents an interesting situation emphasizing the limited scope of IPR proceedings and the interplay between PTAB practice and co-pending litigation. In Activision Blizzard., the Petitioners challenged claims of U.S. Patent 6,920,497, a patent directed to “a method of connecting a seeking computer through a portal computer to…