The Federal Circuit was recently asked to review the interplay of real-parties-in-interest and the inter partes review (“IPR”) time-bar. Acoustic Technology, Inc., Appellant v. Itron Networked Solutions, Inc., Nos. 2019-1059, 2019-1060 (Fed. Cir. Feb. 13, 2020) (opinion available here).  The facts raised an interesting question of how business mergers can affect IPR and

In BioDelivery Sciences International v. Aquestive Therapeutics, Inc., the Federal Circuit recently denied a petition for a rehearing en banc after the Patent Trial and Appeal Board (“PTAB” or “the Board”) interpreted its remand order to “implement the [Supreme] Court’s decision in [SAS Institute v. Iancu]”[1] by modifying its institution decision, denying

The PTAB’s Precedential Opinion Panel (POP) issued its decision in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (P.T.A.B. Dec. 20, 2019) [hereinafter Hulu], which addresses the requirement for a petitioner to establish that an asserted reference qualifies as a printed publication for institution of an inter partes review. The PTAB POP determined that Hulu, as the petitioner, had produced sufficient evidence to establish a reasonable likelihood that the disputed reference, Dougherty, was publicly accessible before the critical date of the challenged patent. The POP cited the facts that Dougherty (1) “bears a copyright date of 1990”, (2) has “a printing date of November 1992”, (3) has an ISBN date of 8/94, and (4) is a textbook from an established publisher, O’Reilly, and is part of a well-known book series. Hulu, at 19.

Continue Reading PTAB Precedential Opinion Panel Evaluates Standard for Showing Public Accessibility of a Reference

The Federal Circuit recently addressed the requirement for establishing “nexus” for secondary indicia. On December 18, 2019, the Court of Appeals for the Federal Circuit (the “Federal Circuit”) vacated and remanded a PTAB decision of non-obvious, and ultimately raised the bar a patentee needs to meet to invoke secondary considerations of non-obviousness. In Fox Factory, Inc. v. SRAM, LLC, No. 18-2024 (Fed. Cir. Dec. 18, 2019), the Federal Circuit vacated an inter partes review (“IPR”) final decision holding the claims of U.S. Patent No. 9,182,027 as non-obvious due in large part to a finding of commercial success attributed to the claimed invention. On appeal, the Federal Circuit concluded that the PTAB improperly applied the presumption of nexus between the evidence of commercial success and the claims of the patent. The court held that the proper presumption of nexus can only be achieved by proving that the product sold by the patentee is “essentially the claimed invention.” Id. at 12.

Continue Reading Federal Circuit Raises the Standard of Nexus Requirement for Secondary Indicia of Non-Obviousness

Recently, the Federal Circuit held that Administrative Patent Judges (“APJs”) comprising the 3-member USPTO Patent Trial and Appeal Board (“PTAB”) are unconstitutionally appointed in violation of the Appointments Clause of the Constitution. The court promptly remedied the violation and limited its effect on other PTAB decisions.

Continue Reading The Federal Circuit’s Determination That Administrative Patent Judges are Unconstitutionally Appointed

On October 22, 2019, the USPTO published a Federal Register notice proposing changes to the rules of practice for inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patents (“CBM”) (collectively “post-grant trial”) proceedings regarding burdens of persuasion for motions to amend and the patentability of substitute claims.[1]

Specifically, the Federal Register

Recently, the U.S Court of Appeals for the Federal Circuit held that the retroactive application of inter partes review (“IPR”) proceedings to pre-AIA issued patents is not a violation of the Takings Clause of the Fifth Amendment.  In Celgene Corp. v. Peter, Celgene appealed the Patent Trial and Appeal Board’s (“PTAB”) final written decision

A recent Federal Circuit opinion held that state sovereignty does not shield states from  inter partes review (“IPR”) before the Patent Trial and Appeal Board (the “Board”). Regents of the Univ. of Minn. V. LSI Corp., No. 2018-1559 (Fed. Cir. June 14, 2019) (opinion available here). This decision is another strike against sovereign