The Federal Circuit Giveth, And The Federal Circuit Taketh Away

Posted by Jonathan Roses on Feb 19, 2020

Jonathan Roses

That is the gist of a recent decision by the court, which permitted an IPR Petitioner to use “general knowledge” to fill in missing claim limitations in certain circumstances, but also constrained the PTAB as to what grounds may serve as the basis for instituting trial.

Petitioners seeking IPR of a patent must make their case for unpatentability based on two types of prior art – patents and printed publications. However, in Koninklijke Philips N.V. v. Google LLC (No. 2019-1177), the Federal Circuit held that those references can be used as evidence of the general knowledge, and need not be made part of a specific combination. Specifically, the court found that the Petitioner had properly alleged that although the primary reference relied upon did not disclose each and every element of the claimed invention, the differences between the claimed invention and that reference would have been obvious to a skilled person based on their general knowledge.

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Topics: Prior Art, "Federal Circuit", PTAB

Supreme Court Oral Argument Review: The Justices Appear Split in Thryv v. Click-to-Call

Posted by Susmita Gadre on Jan 2, 2020

Susmita Gadre

(Co-authored by Stuart Duncan Smith)

The Supreme Court heard oral arguments in Thryv v. Click-to-Call Technologies last month. As we previously discussed, the case concerns whether the PTAB’s finding that a petition for IPR was timely filed is reviewable on appeal. If the Justices’ questions at oral arguments are any indication, a split decision is likely.

At issue in the case is Section 314(d) of the Patent Act, which bars appeal of the PTAB’s decision “to institute an inter partes review under this section.” The Justices must decide whether that statute applies to, and thus bars appeal of, the PTAB’s finding that the petitioner timely filed the petition before the end of Section 315(b)’s one-year window.

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Topics: "Federal Circuit", IPR, PTAB

The Federal Circuit Provides a Roadmap for Using Articles in IPR

Posted by Turhan Sarwar on Dec 20, 2019

Turhan Sarwar

(Co-authored by Stuart Duncan Smith)

Too often some challenger in IPR declines to use non-patent literature (or “NPL”), such as academic and trade journal articles, because of the effort and risk associated with establishing that the NPL is prior art. The Federal Circuit’s recent decision in Telefonaktiebolaget LM Ericsson V. TCL Corp. (No. 17-2381) illustrates why that strategy can be a mistake and provides guidance on how to use NPL effectively.

As we have discussed, the PTAB often imposes specific requirements for establishing that an NPL reference is a prior art printed publication. Unlike with patent prior art, where challengers can ordinarily rely on the dates on the document itself, challengers typically have to introduce evidence that NPL was publicly accessible early enough to make it prior art. Getting that evidence can be challenging, which is why some challengers shy away from using NPL at all.

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Topics: "Federal Circuit", IPR, PTAB, NPL, Non-Patent Literature

Can Amendment Save Your Claims in IPR?

Posted by Elizabeth Hudson on Dec 9, 2019

Elizabeth Hudson

(Co-authored by Stuart Duncan Smith)

In the past, moving to amend the challenged claims during IPR was largely futile. The PTAB denied nearly all motions to amend, and many patent owners that might have benefited from amendment chose not to pursue it. But the rules concerning amendment in IPR are changing, and the number and success rate of motions to amend are ticking up. Patent owners have new reasons to think that amendment might save their patents from IPR.

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Topics: IPR, PTAB, POP, USPTO

Continued Uncertainty About Estoppel Highlights the Importance of Preparing Carefully

Posted by Anant Saraswat on Nov 19, 2019

Anant Saraswat

Challengers in post-grant proceedings like IPR may not reassert invalidity arguments in court that they “raised or reasonably could have raised” before the PTAB. Several recent cases illustrate that whether a particular invalidity argument “reasonably could have [been] raised” is a fact-intensive question that the parties must be prepared to address. These cases also show that both patent owners and challengers should develop a factual record relating to whether estoppel applies to a given invalidity theory.

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Topics: Patent Owners, IPR, PTAB

Supreme Court Preview: What Can a Patent Owner Do When the PTAB Institutes an IPR That the Statute Doesn’t Permit?

Posted by Susmita Gadre on Nov 14, 2019

Susmita Gadre

(Co-authored by Stuart Duncan Smith)

The statute that created inter partes review (IPR) defines certain situations when IPR is not available. For example, IPR is not available if the petitioner was served with a complaint alleging infringement of the challenged patent more than a year earlier. But if the PTAB institutes an IPR that the statute does not permit, does the patent owner have any way to challenge that institution decision? The obvious answer might seem to be appealing the institution decision to the Federal Circuit Court of Appeals, but the same statute also says the PTAB’s institution decision is “final and nonappealable.” Next month in Thryv, Inc. v. Click-to-Call, the Supreme Court will consider whether patent owners can ask the Federal Circuit to keep IPR within its statutory confines.

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What’s Estoppin’ You? – Beware the Barriers of Asserting Judicial Estoppel

Posted by Post-Grant Group on Nov 11, 2019

Judicial estoppel is an equitable doctrine that precludes a party from taking a position in one proceeding that is inconsistent with a position the party took in a previous proceeding. It can be used as a defensive strategy in an inter partes review, for example, when the patent owner identifies that the petitioner is advancing an argument in its petition that is inconsistent with a position the petitioner took in some other proceeding. However, four recent IPRs, exemplified by IPR2018-00291, highlight that meeting the standard for judicial estoppel is no easy task. 

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IPR Estoppel May Apply to Product-Based Defenses

Posted by Anant Saraswat on Sep 4, 2019

Anant Saraswat

Under the estoppel provisions of 35 U.S.C. § 315(e), if an IPR results in a final written decision, the petitioner is barred from raising invalidity arguments in court or the ITC based on any grounds the petitioner “raised or reasonably could have raised” in the IPR, which may in practice mean any grounds based on patents or printed publications. Thus, petitioners involved in parallel litigation sometimes assert backup invalidity defenses based on prior art products. Two recent cases demonstrate that while such defenses can avoid estoppel, courts may reject perceived attempts to dodge estoppel by simply repackaging a publication-based ground as a product-based ground.

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Topics: IPR Estoppel, ITC, IPR

Federal Circuit Declines to Take Up Winning-Petitioner Estoppel

Posted by Scott Forman on Aug 5, 2019

Scott Forman

The Federal Circuit recently declined to consider whether a successful IPR petitioner is estopped from making its winning invalidity arguments in district court. If a winning petitioner does face estoppel, its arguments may be limited to those which could not have been brought through IPR when parallel litigation on the same patent proceeds pending rehearing or appeal of the IPR decision. This view of estoppel would shake up the carefully choreographed interplay between district court litigation and FDA approval of a generic manufacturer’s ANDA envisioned by the Hatch-Waxman Act. However, in BTG International Ltd. v. Amneal Pharmaceuticals LLC, the court found the issue moot after upholding the PTAB’s decision finding the challenged claims obvious.

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Topics: Petitioners, IPR

In Follow-On IPR Petitions, Different Prior Art May Not Be Considered Substantially Different

Posted by Lingyin Ge on Jun 18, 2019

Lingyin Ge

An IPR follow-on petitioner may find it particularly challenging to select the best prior art references and arguments to submit to the PTAB. To make matters worse, the PTAB may decide to invoke its discretionary denial under 35 U.S.C. § 325(d) if it considers the prior art and/or arguments submitted in the follow-on petition to be the same or substantially the same as those considered during prosecution, in parallel proceedings, or in an earlier-filed IPR petition, even if the follow-on petition is filed by a different entity.

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Topics: Prior Art, IPR

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This blog is intended to promote thought and debate on developing areas of the law. The opinions, commentary and characterizations of cases provided on this blog are not legal advice and do not represent the opinions of Wolf Greenfield or its clients.