On Thursday of last week, the Federal Circuit sitting en banc heard oral arguments in Wi-Fi One, LLC v. Broadcom Corporation. At its core, this rehearing focuses on the relatively narrow issue of whether USPTO determinations regarding the timeliness requirements of 35 USC § 315(b) are eligible for judicial review. However, based on the
Appeal
Not so Fast: Federal Circuit Reiterates Limitations on Anticipation
Posted in Appellate Decisions
In a rare reversal of a Board IPR decision, the Federal Circuit in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., No. 2016-1900 (March 14, 2017) (Judges Lourie, Moore, and Taranto), distinguished between an anticipatory reference that explicitly discloses multiple possible combinations and a reference that fails to disclose all claim elements…
What’s at stake in Aqua Products
Posted in Appellate Decisions
In In re Aqua Products, Inc., No. 2015-1177, the Federal Circuit is revisiting en banc its prior precedent upholding the Patent Trial and Appeal Board’s approach of allocating to the patentee the burden of showing that a proposed amended claim in an IPR would overcome the art of record.[i]
The PTO has promulgated…
Further Guidance on Subject-Matter Eligibility in Apple, Inc. v. Ameranth, Inc.
By Mark T. Rawls & Derek F. Dahlgren on
Posted in Appellate Decisions
A new § 101 decision provides a little more insight into subject-matter eligibility. In Apple, Inv. v. Ameranth, Inc., Case Nos. 2015-1703, and -1704, the Federal Circuit reviewed decisions in CBM2014-00013, -00015, and -00016 (decision dated November 29, 2016). The CBMs involved subject matter eligibility challenges against the claims of U.S. Patent Nos. 6,384,850;…
Federal Circuit Requires Notice and Opportunity to Respond to Asserted Grounds of Invalidity in IPRs But Sets Low Bar for “Minimally Sufficient” Notice
By Michael V. Battaglia & Nancy J. Linck on
Posted in Appellate Decisions
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…
Limiting the Scope of CBM Eligibility: Unwired Planet, LLC v. Google Inc. (Fed. Cir. Nov. 21, 2016)
By Eric D. Blatt & Derek F. Dahlgren on
Posted in Appellate Decisions
In the recent opinion in Unwired Planet, LLC v. Google Inc., the Federal Circuit has limited the reach of covered business method (CBM) reviews. The Board had framed its CBM eligibility standard as asking “whether the patent claims activities that are financial in nature, incidental to a financial activity, or complementary to a financial…
The PTAB Mistakenly Excluded Exhibit Showing Conception
By Nancy J. Linck & Michael V. Battaglia on
Posted in Appellate Decisions
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…
Two More Federal Circuit Judges Question Achates and Wi-Fi One
By Elizabeth Brenner-Leifer on
Posted in Appellate Decisions
In Click-To-Call, two Federal Circuit judges called for en banc review of the Achates and Wi-Fi One decisions holding that 35 U.S.C. § 314(d)[i] precludes appellate review of a Board’s IPR determination underlying institution that the petitioner could overcome the one-year time bar under 35 U.S.C. § 315(b).[ii]
Concluding that it is…
A Win for Patent Owners at the Federal Circuit on When the Cited Art is Not a Bar
By Michael V. Battaglia & Nancy J. Linck on
Posted in Appellate Decisions
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…
Limitations on the Scope of Appellate Review in the Aftermath of Cuozzo v. Lee
Posted in Appellate Decisions
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…