In MaxLinear, Inc. v. CF Crespe LLC, the Federal Circuit recently confirmed that issue preclusion applies to administrative agency decisions, including those from the Patent Trial and Appeal Board (“PTAB”) in IPR proceedings. In MaxLinear, Inc., the Federal Circuit was presented with the appeal of a PTAB decision upholding the patentability of the
Appellate Decisions
Federal Circuit Holds That PTAB May Issue Adverse Judgments Prior to an Institution Decision
By Nicole M. DeAbrantes on
Posted in Appellate Decisions
On January 24, 2018, the Federal Circuit affirmed a decision of the Patent Trial and Appeal Board (“PTAB”), finding that 37 C.F.R. § 42.73(b) allows the PTAB to enter an adverse judgment prior to an institution decision when the patent owner disclaims all of the challenged claims. In Arthrex, Inc. v. Smith & Nephew, Inc.…
The Strict Limits of 3 U.S.C. § 121’s Safe Harbor Provision (And the Intersection of Two Blogs)q
By Daniel R. McCallum on
Posted in Appellate Decisions
Patent litigation often involves the intersection of practice before the PTAB and district courts. Not surprisingly then, the subject of this post—the Federal Circuit’s recent opinion concerning the reexamination of U.S. Patent No. 6,284,471 (“the ʼ471 patent”)—directly relates to a litigation analyzed on our firm’s companion blog, BiosimilarsIP.com. See here and here.
In re…
Wi-Fi One, LLC v. Broadcom Corp – Federal Circuit Holds that PTAB Time-Bar Rulings Are Appealable
By Douglas Choi on
Posted in Appellate Decisions
In Wi-Fi One, the Federal Circuit held en banc that time-bar determinations by the PTAB under § 315(b) are appealable and remanded the associated IPRs for further proceedings pertaining to the time-bar issue.
Appeals from IPR decisions of the PTAB are limited in scope by § 314(d), which states that “the determination by the…
Leave No Stone Unturned – Microsoft Corp. v. Parallel Networks
By Daniel R. McCallum on
Posted in Appellate Decisions
The Federal Circuit, as an appellate court, defers to the findings of the Patent and Trial Appeal Board (the “Board”). But that deference only goes so far. The Federal Circuit’s December 1, 2017, non-precedential opinion in Microsoft Corporation v. Parallel Networks Licensing, LLC, is another example of the Federal Circuit requiring the Board to…
Further Guidance on Claim Construction in Owens Corning v. Fast Felt Corp.
By John D. Higgins on
Posted in Appellate Decisions
Remands and reversals of the Board are relatively rare. Nonetheless, the Federal Circuit has vacated or reversed PTAB decisions every so often for adopting an erroneous claim construction.[1] Most recently, in Owens Corning v. Fast Felt Corp., 2016-2613 (Fed. Cir. Oct. 11, 2017), the Federal Circuit reversed the PTAB’s decision upholding the challenged…
Federal Circuit Rejects PTAB’s Construction as Overly Broad
By Nicole M. DeAbrantes on
Posted in Appellate Decisions
On September 26, 2017, in In re Smith International, Inc., the Federal Circuit reversed the PTAB’s decision affirming an examiner’s final rejection in an ex parte reexamination. During the ex parte reexamination, the examiner rejected claims 28-36, 39-46, 50, 79-81 and 93-99 of U.S. Patent No. 6,732,817 (“’817 patent”) as anticipated or obvious in…
Ultratec v Captioncall – Further Scrutiny of PTAB Practices?
By Douglas Choi on
Posted in Appellate Decisions
In Ultratec, the Federal Circuit highlighted several problems with the Patent Trial and Appeal Board’s (“PTAB” or “Board”) permissive rules of trial proceedings and held that the PTAB abused its discretion in the consideration of supplemental information.
By way of background, Ultratec sued Captioncall for infringement of eight patents directed to systems for assisting…
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd. – A Foreshadowing of Future Scrutiny of PTAB Practices?
By Soumya P. Panda on
Posted in Appellate Decisions
In Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. LTD., 2016-2321 (Fed. Cir. August 22, 2017)(designated precedential), the Federal Circuit upheld the PTAB’s finding that a patent directed to an HVAC system was invalid. However, a concurring opinion criticized the PTAB’s joinder practice and use of expanded panels, indicating that such practices…
Federal Circuit Replaces PTAB Findings of Fact with Its Own to Reverse Holding of No Anticipation
By Michael V. Battaglia on
Posted in Appellate Decisions
In Homeland Housewares, LLC, v. Whirlpool Corporation, IPR2014-00877 (Fed. Cir. Aug. 4, 2017) (Judges Prost, Newman, and Dyk), the Federal Circuit reversed a Board decision in an inter partes review of claims 1-16 of the U.S. Patent No. 7,581,688 (“’688 patent”), which found the challenged claims to be not invalid as anticipated by U.S.…