In Ericsson Inc. v. Intellectual Ventures I LLC, the Court of Appeals for the Federal Circuit vacated and remanded a final written decision of the Patent Trial and Appeal Board (“the Board”) because the Board erred in not considering portions of Ericsson’s Reply regarding new claim constructions adopted by the Board after institution. —
Appellate Decisions
Voluntary Dismissal Without Prejudice Does Not Nullify § 315(b)’s Time Bar
On August 16, 2018, the en banc Federal Circuit held that 35 U.S.C. § 315(b) unambiguously triggers the one-year time bar to file an inter partes review (IPR) petition after a complaint is served, regardless of what may follow. In its decision, Click-to-Call Technologies, LP v. Ingenio, Inc., __ F.3d __, 2018 WL 3893119 (Fed.…
Federal Circuit: No Tribal Sovereign Immunity in IPRs
On Friday, July 20, 2018, the Federal Circuit, in a precedential opinion, affirmed the Patent Trial and Appeal Board’s (“PTAB’s”) decision that tribal sovereign immunity does not apply in inter partes review (“IPR”) proceedings and that the U.S. Patent & Trademark Office (“USPTO” or “the Office”) has the authority to decide the validity of…
PGS v. Iancu – The Post-SAS Landscape Develops
The Supreme Court held in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), that the Patent Trial and Appeal Board’s (“PTAB” or “the Board”) practice of so-called partial institutions was contrary to the statute. The Supreme Court explained that once an inter partes review (“IPR”) is instituted, the PTAB must decide on…
Non-Patent Literature at the PTAB
Typically, the Patent Trial and Appeals Board (PTAB) is thought to disfavor non-patent literature—that is, “printed publications” under 35 U.S.C. § 102(b) that are not patents, patent publications, or patent applications.
To the extent that this is true, it most likely stems from the fact that members of the PTAB are, by training, used to…
Patent-Ineligibility of Mathematical Techniques in SAP America: Is there a distinction to be made between finance and artificial intelligence innovations backed by mathematics?
No matter how groundbreaking, innovative, or brilliant the advance, innovators in mathematical techniques, particularly in the finance field, may think twice about seeking patent protection in view of the Federal Circuit’s recent precedential Section 101 decision in SAP America, Inc. v. Investpic, LLC, No. 2017-2081 (Fed. Cir. May 15, 2018).
There, claim 1…
The Future of IPRs – The US Supreme Court’s Decisions in Oil States and SAS
Yesterday, the U.S. Supreme Court issued two important decisions relating to inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (PTO).
Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, U.S., No. 16-712, 4/24/2018
In Oil States, the Supreme Court ruled…
How Creative is One of Ordinary Skill – DSS Tech. Mgmt. v. Apple Inc.
In an attempt to challenge the patentability of an issued claim, petitioners every so often come across a prior art reference that discloses all the recited features of the claim at-hand except for one limitation. Rather than bringing in another reference to teach that one limitation, petitioners sometimes merely refer to the knowledge and creativity…
In Re Hodges – Federal Circuit Rules PTAB Must Sufficiently Explain Its Factual Findings
On Monday, February 12, 2018, the Federal Circuit reversed the Patent Trial and Appeal Board’s (“the Board”) anticipation rejections and vacated and remanded the obviousness rejections against U.S. Patent Application No. 12/906,222 (“the ’222 application”), an application directed to a valve assembly for draining contaminants, condensation, and other fluids that adversely affect the efficiency and…
Federal Circuit Revives Polaris’ Claims After PTAB’s Obviousness Analysis Veers Off Course
On February 9, 2018, in vacating and remanding parts of an obviousness decision, the Federal Circuit found that the Patent Trial and Appeal Board (“PTAB” or “the Board”) erred in parts of its analysis of motivation, teaching away, and commercial success in cancelling all claims of Polaris’ U.S. Pat. No. 8,596,405 (“the ’405 patent”) in…