In 2017, Twitter, Inc. (“Twitter”) filed two petitions requesting inter parties review (“IPR”) of U.S. Patent No. 9,083,997 (“the ’997 patent”), with the first petition directed to claims 1-19 and the second petition directed to claims 20-35. The Patent Trial and Appeal Board (“the Board”) issued two substantially similar Final Written Decisions (IPR2017-00829, IPR2017-00830) that
Federal Circuit
The Federal Circuit Issues Decision Clarifying the Qualifying Test for Analogous Art
On November 9, 2020, the Federal Circuit vacated and remanded a decision by the United States Patent Office Patent Trial and Appeal Board (“PTAB”) in Donner Tech., LLC v. Pro Stage Gear, LLC,[1] holding that the PTAB applied an incorrect standard to determine whether a reference in the case was analogous art. While…
Claim Construction Arguments in Appeal Forfeited if Not Raised Before the Board
In In re: Google Technology Holdings LLC, No. 2019-1828 (Fed. Cir. Nov. 13, 2020), the Federal Circuit elaborated on the policies underlying waiver and forfeiture of appellate arguments. Ultimately, the court affirmed the Patent Trial and Appeal Board’s (“the Board”) obviousness rejections of the claims at issue because Google had forfeited the arguments it…
Still No Same Party Joinder and Joinder of New Issues through 35 U.S.C. § 315(c)
The Federal Circuit reconfirmed its interpretation of the IPR joinder rules of 35 U.S.C. § 315(c) after the panel’s rehearing in Facebook, Inc. v. Windy City Innovations, LLC, No. 2018-1400, 2020 WL 5267975 (Fed. Cir. Sept. 4, 2020). Appellant Facebook, Inc. had filed a combined request for panel rehearing and rehearing en banc. The…
Avoidable Errors at the PTAB: When an “Index” is Not an “Index”
Last week, Microsoft got tripped up at oral argument on the blocking and tackling of IPR practice: making sure your prior art is prior art.
The specific error was eminently avoidable, though perhaps also eminently understandable. Under Federal Circuit law, a reference generally does not count as prior art unless it was “indexed.” (Think Dewey…
IPR Parties Joined under 315(c) Have Full Rights to Appeal
With an unusual fact pattern, and a Federal Circuit opinion that touches on standing to appeal, joinder of parties, and agency obligations, Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112 (Fed. Cir. 2020), seems closer to a law school teaching aid than an actual inter partes review (“IPR”) appeal. Without addressing the asserted grounds…
Federal Circuit Grants Remand in Ex Parte Reexam While World Waits for Supreme Court to Weigh in on Arthrex
On June 18, 2020, the Federal Circuit granted JHO Intellectual Property Holdings, LLC’s (“JHO”) motion to vacate the PTAB’s final written decision and remand the case in light of the court’s decision in Arthrex. In an ex parte reexamination proceeding, the PTAB denied JHO’s request for rehearing of its decision affirming the Examiner’s rejections…
Delays, Denials and Uncertainty: Developments in the Arthrex Redo Case Line
The Halloween 2019 decision, Arthrex v. Smith & Nephew,[1] created a new right to rehearing in the Patent Trial and Appeal Board (“PTAB”), and has sent ripples through the judiciary and legislative branches that will continue to be felt for the foreseeable future. In the case, the Federal Circuit opinion announced that the…
Court of Appeals Affirms PTAB Decision on Person Eligibility for Post-Issuance Review and Patentable Subject Matter
The Court of Appeals for the Federal Circuit issued its decision in Bozeman Financial LLC v. Federal Reserve Bank Of Atlanta, Case No. 19-1018 (Fed. Cir. Apr. 10, 2020) [hereinafter Bozeman], holding that Federal Reserve banks (hereinafter “the Banks”) are people under the AIA, capable of petitioning for post-issuance review. The Court further…
Federal Circuit Denies Stay of Arthrex Remands: PTAB Must Start Working on Rehearings
On March 30, 2020, the Federal Circuit denied the federal government’s unopposed motion to stay a mandate of the court’s final judgment in Arthrex v. Smith & Nephew, meaning the United States Patent Office’s Patent Trial and Appeal Board (“PTAB”) must reopen and rehear up to 81 cases decided by the PTAB before the…