IPR – IP Law Watch

Federal Circuit Clarifies Scope of Estoppel Provision and Provides Guidance on “Patentably Distinct” Claims

Jul 30 2024

On 26 July 2024, the Federal Circuit entered its decision in SoftView LLC, v. Apple Inc.¹ holding that patent owner estoppel² applies to newly presented and amended claims, but does not apply to issued claims. The Federal Circuit also confirmed that patent owner estoppel prevents a patent applicant from later obtaining a patent claim that is “not patentably distinct” from a finally refused or cancelled claim, but that patent owner estoppel does not apply to defending issued, unamended claims.

Federal Circuit Rules AAPA in Challenged Patent Does Not Qualify as Prior Art Under 35 U.S.C § 311(b) but Signals AAPA Can Play Role in §103 Analysis

Feb 03 2022

On 1 February 2022, the Federal Circuit released its decision in Qualcomm v. Apple¹ providing guidance on the treatment of Applicant Admitted Prior Art (AAPA) under 35 U.S.C § 311(b) in Inter Partes Review (IPR) proceedings. In doing so, the Federal Circuit vacated two IPR decisions² of the Patent Trial and Appeal Board (PTAB) where the PTAB had found several claims of U.S. Patent No. 8,063,674 (“the ’674 patent”) unpatentable under 35 U.S.C. § 103. In doing so, the Federal Circuit remanded the case to allow the PTAB to address the specific issue of whether the AAPA cited by Apple improperly formed the “basis” of Apple’s § 103 challenge or was simply ancillary.

French Reform of Automatic Intellectual Property Assignment for Non-Employee Personnel

Jan 10 2022

France is widely known for its author-centric intellectual property right (IPR) framework: except for a limited number of very specific situations, all IPR must be expressly assigned and there is no “work for hire” doctrine.

This situation is changing, further to Decree n°2021-1658 dated 15 December 2021, replicating the regime applicable to inventions and software created by employees or public servants to those made by natural persons accommodated by private or public law entities carrying out research.

This decree amended the French Intellectual Property Code (FIPC), by creating two new articles: L.113-9-1 (with regard to software IPR) and L.611-7-1 (with regard to patent IPR) FIPC.

Substance Over Form: The Importance of Substantive Grounds in Parallel District-Court Litigation and Prior Petition IPR Denials in OpenSky Indus., LLC v. VLSI Tech. LLC

Jan 09 2022

On 23 December 2021, the Patent Trial and Appeal Board (“the Board”) instituted inter partes review (IPR) of U.S. Patent No. 7,725,759 B2 (“the ’759 patent”). See OpenSky Indus., LLC v. VLSI Tech. LLC IPR2021-01064, Paper 17 (Dec. 23, 2021). Petitioner OpenSky Industries, LLC (“OpenSky”) relied on expert declarations of Dr. Sylvia D. Hall-Ellis and Dr. Bruce Jacob originally filed by Intel Corporation in two other IPR proceedings (“Intel IPRs”).¹ Indeed, the declaration included the same coversheet that accompanied the declaration in the Intel IPR. The Board analyzed OpenSky’s Petition under §314(d) and §325(d), declining to deny institution, finding, in part, that since Fintiv and General Plastic did not warrant discretionary denial, the arguments, which were almost identical to those made in the Intel IPRs, deserved to see their day in court at the PTAB.

Guide: How to Enforce Intellectual Property Rights in China

Aug 18 2021

This step-by-step guide sets out the actions to be taken upon discovering an infringement of an intellectual property right (IPR) in the People’s Republic of China (China). The IPRs addressed in this guide include copyright, trademark, patent, and unfair competition (including counterfeiting).

View the full article here

PTAB’s Motion to Amend Patentability Powers

Jul 27 2020

In a 2-1 split decision on Wednesday, July 22, 2020, the Federal Circuit confirmed that the Patent Trial and Appeal Board (“PTAB“) had the authority to reject substitute claims under 35 U.S.C. §§ 101 and 112, statutory grounds not available to the PTAB for evaluating patentability of granted patent claims in inter partes review (“IPR“). (Uniloc 2017 LLC, v. Hulu, LLC et al., Case No. 2019-1686, slip op. at 3 (Fed. Cir. July 22, 2020).)

PTAB designates additional decisions precedential relating to its discretion to deny petitions

Mar 26 2020

On Tuesday, the Patent Trial and Appeal Board (PTAB) designated two decisions precedential and one as informative explaining the circumstances under which the Board will exercise its discretion under 35 U.S.C. § 325(d) and 35 U.S.C. § 314(a) to deny petitions. The cases analyzed situations where the prior art and invalidity arguments advanced by Petitioner were similar/identical to those previously considered by the examiner and where the timing of a final decision may coincide with another body’s findings (e.g., a district court trial) regarding validity. These cases provide guidance to Petitioners and Patent Owners alike about how to construct discretionary denial arguments, in particular regarding the appropriate way to address art that may or may not be cumulative to already-considered references.

POP Provides Clarity Regarding Level of Proof for Printed Publications Before the PTAB

Dec 23 2019

The PTAB’s Precedential Opinion Panel (“POP”) issued a decision in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, on Friday, December 20, 2019. The issue at hand: “What is required for a petitioner to establish that an asserted reference qualifies as ‘printed publication’ at the institution stage?” Hulu v. Sound View, IPR2018-01039, Paper 29 at *2 (P.T.A.B. December 20, 2019).

This decision provides clarity on an issue that was often addressed inconsistently across panels regarding the “requirements for institution involving issues of public accessibility of an asserted ‘printed publication.’” Id. at 2.

Unconstitutionality of PTAB judges corrected by Federal Circuit decision

Nov 03 2019

In a Halloween decision, the Federal Circuit issued its opinion in Arthrex, Inc. v. Smith & Nephew, Inc. et al., an appeal from IPR2017-00275. Without wading into the technical merits of the decision, the three judge panel of Judges Moore, Reyna, and Chen, issued a decision that, at first glance, sent tremors through those who practice before the PTAB in AIA-based post-grant review proceedings: finding the appointment of PTAB judges unconstitutional.

IPR of pre-AIA patent not an unconstitutional taking

Jul 31 2019

In a notable, albeit not surprising, U.S. Federal Circuit decision today, the panel in Celgene Corp. v. Peter confirmed that an inter partes review finding of unpatentability of a pre-AIA patent is not an unconstitutional taking. (slip op. 2018-1171 (July 30, 2019)).

Noting an opening in the recent Supreme Court decision in Oil States, the Federal Circuit deemed the circumstances exceptional as their basis for review of an issue not before the PTAB in the underlying proceeding. The panel reasoned that the proceeding being “curative” in nature, and the approximately forty year period of time in which PTAB proceedings have existed subjecting granted patents to potential cancellations for that duration weighted against any unconstitutionality.

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