Patent News

How the death of Chevron might impact patents (posted 07/04/24)

In Loper Bright Enterprises v. Raimondo, the Supreme Court held that “courts may not defer to an agency interpretation of the law simply because a statute is ambiguous.” However, the decision carved out prior cases that relied on the Chevron framework stating that “the holdings of those cases that specific agency actions are lawful . . . are still subject subject to statutory stare decisis.” A challenger must provide a “special justification” to overrule Chevron-era cases.

With the death of Chevron, the “Skidmore 1) Deference Test” is now back. This rule states that a court is not compelled to follow an agency's interpretation of a statute but would determine the amount of deference to give the agency depending on “the thoroughness evident in its consideration, the validity of its reasoning, its consistency with earlier and later pronouncements, and all those factors which give it power to persuade, if lacking power to control.

How will this impact the patent system?

  • The ITC's opinions and interpretations of Section 337 will no longer be entitled to Chevron deference. Therefore, new statutory challenges against induced infringement of products that do not infringe at the time of importation and method claims will increase at the ITC.
    • For example, in Suprema, Inc. v. Int'l trade Comm'n 2), the Federal Circuit upheld under Chevron the ITC's interpretation that Section 337 includes articles that do not infringe at the time of importation, but which are used thereafter to directly infringe at the inducement of the seller. It is unclear whether the “special justification” to overcome stare decisis of past Chevron decisions will protect this doctrine going forward.
  • The PTAB Consolidated Trial Practice Guide (Nov. 2019), PTAB Precedential Opinion Panel (“POP”) decisions and Informative Decisions, and Director Memorandums are not entitled to Chevron deference.

Major change in Design patents (posted 05/29/24)

The reign of Rosen-Durling is over. Long live KSR and Graham v. Deere!

On May 21, 2024, the Federal Circuit, en banc, in LKQ Corp. v. GM Global Tech. Operations, LLC, rejected the decades-long “basically the same” test for design patents and applied standards established for utility patents. This case began with LKQ filing an IPR challenge of GM's design patent of a automotive front fender design. The Board applied the basically-the-same / ordinary observer test and held that the art cited by LKQ did not anticipate or invalidate GM's patent. The panel agreed with the Board but differed on the question of whether KSR overruled Rosen. An en banc rehearing was then granted. Stated the court:

We conclude that the Rosen-Durling test requirements—that (1) the primary reference be “basically the same” as the challenged design claim; and (2) any secondary references be “so related” to the primary reference that features in one would suggest application of those features to the other—are improperly rigid. The statutory rubric along with Supreme Court precedent including Whitman Saddle, Graham, and KSR, all suggest a more flexible approach than the Rosen-Durling test when determining obviousness.

The court summarized the Graham factors: considerations of the scope and content of the prior art, and secondary considerations, and discussed policy concerns regarding risk and uncertainty. Finally, the Court vacated and remanded the panel decision of non-obviousness of the GM's design patent.

USPTO Guidance

In response to this ruling, the USPTO issued guidance. Key points in this memo include:

  1. Focus on the visual impression of the design as a whole
  2. Consider the design from perspective of the ordinary designer, not the ordinary observer.
  3. Prior art must satisfy analogous art test
  4. KSR rationale must be present
  5. Further guidance and training will be forthcoming.

What are the practical implications of this decision?

  • From McDermott Will & Emery: “Changes obviousness requirements for design patents to a less rigid standard, which can open design patents to additional scruitiny and validity challenges.”
  • From MoFo: “For litigants, . . . less certainty, at least in the near term. [. . .] This decision is also likely to have a noticeable impact on the examination of design patent applications. During oral arguments, the Solicitor for the Patent Office indicated that only about four percent of design patents are rejected as obvious. With this new . . . test, this rate is likely to increase.”
  • From Jones Day: “Design patent challengers now have more flexibility to frame their obviousness theories under LKQ. Nevertheless, they must still develop visually persuasive reasons for why a designer of ordinary skill would combine or modify prior art to achieve the challenged design, without the use of impermissible hindsight.”

J. Albright reversed on basic claim construction principles (posted 03/07/24)

Judge Albright of the western district of Texas has an overal decision reversal rate of 25%, which is much higher than the national average of 16%. In the area of claim construction, his claim construction orders are vacated or reversed more often than confirmed, with a vacate/reverse rate of 39.5% verses a 38.8% affirm ratio rate, with the remaining cases being settled or voluntarily dismissed.3)

Claim 1. A nonaqueous secondary battery comprising:

[a] a positive electrode . . . [b] wherein . . . the lithium-containing transition metal oxide having the smallest average particle size is a lithium-containing transition metal oxide represented by the formula (1): LixM1yM2zM3vO2

[c] wherein M1 represents at least one transition metal element selected from Co, Ni and Mn, . . . ;

[. . .]

[f] wherein the content of Co in the transition metal M1 of the formulae (1) and (2) is from 30% by mole to 100% by mole,

In Maxell, Ltd. v. Amperex Technology Ltd, the Fed. Cir.'s latest reversal of a claim construction out of Albright's court, the Federal Circuit rejected Albright's reasoning that the claims were indefinite because they recite a contradiction. Specifically, the district court stated that ”[t]he first part of the claim recites a Markush group where [cobalt] is not necessarily required to be in the claimed compound while the second part of the claim recites that [cobalt] is necessarily required. For an element to simultaneously be optional and required is a contradiction on its face.“

The Federal Court, however could find no contradiction in the claim. Stated the court: “It is perfectly possible for a transition metal element to meet both requirements. The two limitations are therefore not contradictory.

The court continues (internal citations omitted):

[A] reader seeking to understand “the scope of the invention,” is charged with knowing not only that any particular claim language must be “read in the context of the full claim,” but also that “all limitations of a claim must be considered in deciding what invention is defined,” In this context, as in other legal-interpretation settings, later text must be read along with earlier text to discern the meaning.
[. . .]
The district court’s explanation for its contrary conclusion repeatedly describes limitation [c] as granting “options” as to the makeup of M1—seemingly in the sense of a grant of right to others—which limitation [f] then takes back. But this description is inapt, even aside from its treatment of the limitations in isolation from each other. Claim limitations do not grant options. They state requirements—conditions that must be met for a product or process (as the case may be) to come within the claim’s protected zone of exclusivity. If there are two requirements, and it is possible to meet both, there is no contradiction.

Fed. Cir. holds claims to targeted advertising as ineligible (posted 03/07/24}

Claim 1. A method of targeting at least one associated advertisement from an Internet search [. . .], comprising:

identifying at least one search result item [. . .];

searching for said at least one associated advertisement within said repository using said at least one search result item;

identifying said at least one associated advertisement from said repository [. . .]; and

correlating said at least one associated advertisement with said at least one search result item.

Claim 5. The method of claim 1 further comprising: designating said at least one search result item matched to said at least one associated advertisement for subsequent selection by a user.

Claim 13. The method of claim 5 further comprising performing an off-line batch process for each of said at least one search result item, wherein said batch process identifies said at least one associated advertisement for said at least one search result item.

In Chewy v. IBM Corp., the Federal Circuit upheld a determination that claims of U.S. patent 7,076,443 as being ineligible as being drawn to abstract subject matter. The court agreed with the lower court Summary Judgment which concluded that at, Alice step one, the asserted claims are directed to the abstract idea of identifying advertisements based on search results, and rejected IBM's argument that the claims are instead directed to a patent-eligible improvement in online advertising: obtaining search results from a user’s search query and using those search results to identify targeted advertisements.

State the court: “Unlike the claims in Packet Intelligence, 4) the ’443 patent claims are not directed to any challenges unique to computer networks, or specific improvements to the functionality of the computer itself. The claims merely recite the concept of identifying advertisements based on search results, without any specificity as to how this is accomplished. Even accepting that the claimed invention improves the specificity and relevancy of online advertisements, this “is at most an improvement to the abstract concept of targeted advertising wherein a computer is merely used as a tool.” Customedia, 951 F.3d at 1365.”

With respect to Alice step 2, the court rejected IBM's arguments that (1) claims 13 and 15 recite an inventive repository configured to associate search results with advertisements, (2) claim 13 recites using offline batch processing in an unconventional way, and (3) claim 16 recites refining the targeting criteria by assigning session identifiers when the user enters a search query. The court concluded that “none of these claim elements, individually or as an ordered combination, constitute an inventive concept sufficient to transform the claimed abstract idea of identifying advertisements based on search results into patent-eligible subject matter.”

With respect to claim 13, the court held as follows (internal citations omitted):

It is undisputed off-line batch processing was conventional at the time of invention. The ’443 patent does not suggest the claimed invention uses off-line batch processing in an unconventional manner. The claimed invention uses conventional off-line batch processing to more efficiently implement the abstract idea of identifying advertisements based on search results. This is insufficient to transform claim 13 into patent-eligible subject matter. We have repeatedly held “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer [does not] provide a sufficient inventive concept.”

Federal Circuit reverses PTAB's holding that each claimed item in a list is necessarily distinct (posted 02/19/24)

Representative claim 1: A method for reducing the cycling time of a climate control system, said method comprising:

[. . .]

[1m] determining a first time prior to said target time at which said climate control system should turn on to reach the target temperature by the target time based at least in part on

[i] said one or more thermal performance values of said structure,

[ii] said performance characteristic of said climate control system,

[iii] said first internal temperature,

[iv] said first external temperature, and

[v] the forecasted temperature;

[. . .].

EcoFactor has asserted Patent 8,498,753 related to intelligent HVAC control against Google and Ecobee in separate proceedings. Google and Ecobee submitted separate IPR petitions seeking to invalidate the patent. On February 7, 2024, the Federal Circuit, in a precedential decision styled Google LLC, Ecobee, Inc. v. EcoFactor, Inc., reversed PTAB on an implied claim construction. While the PTAB stated that they did not construe the claim because it was unnecessary to do so in order to rule in favor of EcoFactor, the Federal Circuit found both that the PTAB did, in fact, construe the claim, and further, that its construction was “erroneous.”

Stated the court (internal citations removed, emphasis in original):

  • To determine whether a court, or the Board, has construed a claim, it is helpful to look at the outcome of the tribunal's analysis. If the outcome of the analysis of the claim term establishes the scope . . . and meaning of the patented subject matter, the court (or the Board) has most likely construed the claim.
  • [T]he Board's statement that it was not engaging in claim construction is not dispositive as to whether claim construction occurred.
  • Here, the outcome of the Board's assessment established the scope of the [1m] limitation. The [1m] limitation lists five enumerated inputs on which the timing for the system to activate is 'based at least in part on.' However, there is nothing on the face of the claim to discern the scope and boundaries of those inputs, e.g., whether one input may be calculated based on another input, and whether they must be distinct or may be entwined. To determine, as the Board did, that no input can be based in part on another input . . . is to establish a limit to the scope of the [1m] claim limitation. Thus, the Board's assessment resulted in a constriction of the claim. The limiting impact of the Board's determination is evidenced by the Board's rejection of Google's argument that a prior art reference's measurement could satisfy both the input for [i] and the input for [iii].

With respect to the incorrectness of the PTAB's claim construction, the Court stated:

  • [T]he claim language supports a broader reading of the [1m] limitation, which must allow for any of the five claimed inputs to potentially be used to calculate another claimed input. The claim language broadly recites that 'a first time' is determined 'based at least in part on' each of the five inputs. This language places no constraint on the manner in which the inputs are used. [. . .] Additionally, the specification supports a broader construction of the [1m] limitation.
  • [T]he Board relied on Becton . . . and Engel. . . . These cases do not create a per se rule that separeately listed claim elements are distinct components, regardless of the intrinsic record.
  • [T]he Board also relied on CAE 5), to support what appears to be a claim differentiation determination that 'nothing in the asserted claims [] suggest[s] that one piece of data can be used to satisfy multiple inputs.' But the doctrine of claim differentiation only creates a rebuttable presumption that each claim in a patent has a different scope; it is a guide, not a rigid rule of claim construction. Here, the claim language and the specification rebut such a presumption.
  • The proper construction of the term must allow for any of the five claimed inputs to potentially be used to calculate another claimed input.


Patents invalidated by Obviousness-Type Double Patenting (posted 01/23/24)

Aug. 28, 2023: In In re Cellect, the Federal Circuit upheld a decision by PTAB to invalidate a set of patents owned by Cellect as invalid under obviousness-type double patenting (ODP). During prosecution, the Examiner never applied an obviousness-type double patenting rejection, and as a result, the patentee never filed terminal disclaimers in the challenged continuation-in-part and continuation applications filed of a “grandfather” priority patent application. After Cellect accused Samsung of infringing, Samsung petitioned for ex-party reexamination. The reexamination examiner then rejected the challenged Cellect patents on ODP grounds and this decision was appealed to PTAB which agreed with the examiner, as did the Federal Circuit. Because the patents were expired at the time of the appeal, it was not possible for Cellect to submit a terminal disclaimer.

The Federal Circuit rejected Cellect’s attempt to argue that ODP should not apply to patent term adjustments under 35 U.S.C. § 154(b)(2)(B) for the same reason that they don't apply to patent term extensions under 35 U.S.C. § 156. 6) The Court also addressed Cellect's other arguments and rejected each in turn, finding that the patents are invalid under obviousness-type double patenting and therefore unenforceable.

On November 13, 2023, Cellect filed a petition for en banc rehearing, which has attracted several amici briefs, which raise some interesting points. On January 19, 2024, the request for rehearing was denied.

:!: UPDATE: In a subsequent case in the District of Delaware, interpreted 35 U.S.C. § 121 as protecting the original patent from being invalidated by a divisional application filed before the issuance of the original application. Allergan USA, Inc. v. MSN Lab’ys Priv. Ltd. See also Acadia Pharms, Inc. v. Aurobindo Pharma Ltd. 7) Both cases are now on appeal before the Federal circuit.

PTAB institutes IPR because Examiner erred in not referencing presented prior art (posted 01/04/24)

In Chongqing Yanmei Technology v. Terves 8), The board rejected the patent owner's arguments for a discretionary denial based on the prior art having been reviewed by the Office during examination. The board agreed that the references were presented to the examiner, but decided to institute the IPR because (1) the examiner materially erred because they failed to mention the references in the reasons for allowance or assert any rejections that applied any of the references, and furthermore, because the patent challenger presented arguments that the examiner failed to consider regarding the challenged claims' entitlement to priority and prior art effect of the cited references.

"As used herein" is definitional, reversing J. Albright (posted 12/19/23)

In ParkerVision v. Vidal 9) Patent owner ParkerVision lost its argument before the Federal Circuit that the term “storage element” (i.e., a capacitor) should be narrowly interpreted as ”. . . of an energy transfer system“ because the embodiment (described in incorporated language of its asserted patent) is directed to an energy transfer system. However, the Court held that the critical paragraph the incorporated language, which includes the phrase, “as used herein” indicates a broad lexicographic definition of “storage modules.” Stated the court:

“Sentence 3 uses the phrase 'as used herein' to indicate that the descriptions in sentences . . . that follow are applicable to the [incorporated] patent as a whole rather than a specific embodiment.”

It is notable that while the Federal Circuit by this ruling upheld the PTAB's construction 10), that construction was contrary to the prior district court construction (of which the PTAB panel was aware) by the Western District of Texas (J. Albright) which applied the narrower interpretation favored by the patent owner. As stated by the Federal Circuit: “The analysis in these district court proceedings does not alter our conclusion that the Board arrived at the correct construction for the term 'storage element.'”

Patent in suit:
U.S. Patent 7,523,373

In VLSI Technology LLC, v. Intel Corporation 11) the court rejected Intel's argument that claim recitations of “when” requires a causal link. The claim reads in part as follows:

providing the first regulated voltage . . . when the first regulated voltage is at least the value of the minimum operating voltage; and

providing the second regulated voltage . . . when the first regulated voltage is less than the value of the minimum operating voltage

Stated the court: “The 'when' claim language can reasonably be understood to mean simply 'at the time that.'”

Fed. Cir.: Doctrine of Equivalents is not a line-drawing exercise (posted 12/14/23)

Patent in suit:
U.S. Patent 7,725,759

In VLSI Technology LLC, v. Intel Corporation 12) the court outlined three limitations on the use of the Doctrine of Equivalents (DoE) in claim construction:

“First, proof of equivalents must be limitation specific, not focused only on the claim as a whole, though the limitation-specific inquiry . . . may be informed by the role played by each element in the context of the specific patent claim.”

“Second, for the determination of whether a substitute element is only insubstantially different from a claimed element and hence an equivalent, a traditional formulation . . . asks whether a substitute element matches the function, way, and result of the claimed element.”

“Third, . . . [t]he patentee must provide particularized testimony and linking argument as to the insubstantiality of the differences between the claimed invention and the accused device.”

Claim 14, in part:

a first master device . . . configured to provide a request to change a clock frequency of a high-speed clock in response to a predefined change in performance of the first master device, wherein the predefined change in performance is due to loading of the first master device as measured within a predefined time interval;

VSLI argued that Intel's ”. . . Lake . . .“ line of microprocessors infringe claim 14 of the '759 patent under the DoE. VLSI proposes that it is a combination of (1) “the core” and (2) “the core-specific p-code” residing on the power control unit that makes the frequency-change request.

VSLI's expert testified that the combination of components provides a request in substantially the same way as claimed because, “it's the first master device and its [p]-code that provides the request.”

The court found this testimony lacking because:

”[i]t contains no meaningful explanation of why the way in which the request is made is substantially the same as what the claim prescribes. The question is not whether, in a schematic drawing used to illustrate functions, an engineer could 'draw . . . [a] line“ in different places. The question is about actual functionality-location differences. It is not enough . . . to say that the different functionality-location placements were a 'design choice.' [. . .] The question that must be addressed is whether the difference in the way the functionalities are actually allocated between devices is an insubstantial one.”

EPO TBA holds regression analysis of travel times "non-technical" (posted 12/10/23)

Claim 1: A travel process prediction system predicting a travel process of a travel object traveling with transportation repeatedly operated at specific time, characterized by comprising:

a means for specifying passage time at which a travel object actually passes through each of a plurality of passage points at a departure/arrival facility of transportation;

a means for acquiring transportation specifying information specifying transportation used by the travel object;

a means for acquiring situation information indicating a situation in which the travel object uses the transportation;

a means for storing passage time at each passage point, transportation specifying information andsituation information, in an associated manner for each of a plurality of travel objects;

a means for extracting, from the means, a plurality of combinations of passage time concerning a specific passage point and other information associated with the passage time; and

a means for calculating, based on the extracted plurality of combinations, an estimate value of passage time at which a travel object passes through a specific passage point under a specific condition by conducting a regression analysis for obtaining a relationship between the passage time and said other information, or a calculation of a mean or variance of the passage time.

The EPO Technical Board of Appeals, on 9/12/23, determined that the claimed method of estimating a travel time of an object using regression analysis of historical data is lacks a technical effect and is therefore unpatentable. With respect to claim interpretation, the Board interpreted the claims broadly, stating, “The means are claimed in functional terms, lacking specific technical details.”

The Board determined that the claim “essentially covers the concept of predicting a mean time for a travel object, like a person passing through a designated point, such as an exit gate at an airport” and further, that “a travel time prediction does not yield any technical effect serving a technical purpose, and the implementation merely involves programming the statistical method on a general-purpose computer.”

The Board reasoned that:

“[f]ollowing the reasoning of T 1148/18 - Travel process prediction/THE AQUA ENTERPRISE COMPANY . . . predicting the arrival or passage time of a traveler or baggage at a specific location based on historical data does not constitute a technical activity.

“This task is performed by a person skilled in applying statistics to logistics and travel planning, rather than a technically skilled person. It encompasses tasks like parameter selection, choosing the prediction algorithm such as regression analysis or deciding on the applicable statistical tests. The latter also involves determining significance levels based on statistical distribution tables such as the chi-square distribution.

“Notably, in the present case, the selection of parameters is not driven by technical considerations, such as their measurement or any technical effects resulting from the selection. Even if this were disclosed in the description, this aspect is not reflected in the claim, which, in the broadest interpretation, merely specifies the (manual) input of passage time and other non-technical data like flight and weather information.

“The claimed means essentially outline the objective of the statistical analysis - namely collecting and storing data and using this data to perform a statistical calculation which could be as simple as calculating the mean value of a set of numbers like the passage time.

“Moreover, the claim does not define any feedback mechanism using the prediction to control the transportation system. This is, for example, different from D6 where, based on the actual location of baggage, the prediction is used to indicate an actual state of the baggage such as being late or on time.”

Internal citations omitted.

Fed. Cir. faults PTAB's obviousness analysis as improperly limited to prior art's context (posted 12/04/23)

In Axonics, Inc. v. Medtronic, Inc. (Decided July 10, 2023), Axonics sought to invalidate as obvious Medtronic's patents at issue, which are directed to a method for implanting and anchoring a sacral nerve- or muscle tissue-stimulating electrode. Specifically, the claims are directed to a lead body with a plurality of electrodes at a distal end, and a plurality of tine elements at a proximal end, where each electrode is connected to a corresponding conductor. Axonics argued that it would have been obvious to modify the primary reference, Young, by replacing one electrode of Young with multiple electrodes as taught by the secondary reference, Gerber. The Young reference is directed to a method for treating chronic facial pain with electrical stimulation.

While the Board agreed with Axionics that the prior art showed each limitation of independent claim 1 in Axionics' proposed combination, the Board sided with Medtronic's assertion that the relevant artisan would not have had a motivation to combine the references to arrive at the claimed invention. Specifically, the Board rejected Axonics' reliance on Young's statement that ”[t]he electrode could be improved to provide multiple active stimulations at the tip” and instead sided with Medtronic's expert that this sentence did not suggest to a relevant artisan to include a plurality of electrodes distal to all the tines because such an arrangement would not be feasible in the complex anatomy of the trigeminal nerve region (of facial nerves) – the subject matter of Young.

The panel found two critical flaws in the Board's analsyis:

  1. The Board improperly confined its motivation inquiry to whether a motivation would exist to make the proposed combination for use in the Young-specifci trigeminal-nerve context.
  2. The Board incorrectly identified the relevant art as “medical leads specifically for sacral neuromodulation.”

Stated the court:

  • When an obviousness challenge asserts a combination of identified prior art . . . [t]he inquiry is not whether a relevant artisan would combine a first reference's feature with a second reference's feature to meet requirements of the first reference that are not requirements of the claims at issue. [. . .] As Medtronic states, ”[t]he real question is 'why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.
  • The Board adopted a legally incorrect framing of the motivation-to-combine question when it confined the inquiry to whether a motivation would exist . . . for use in the Young-specific trigeminal-nerve context. That context is not part of the Medtronic patents' claims.
  • [W]e also conclude that the Board erred in its definition of “the relevant art” as limited to medical leads for sacral-nerve stimulation. [. . .] The Medtronic patent claims make no reference to sacral anatomy or sacral neuromodulation, and they cannot properly be construed as so limited. Neither the Board nor Medtronic has cited any authority for treating the relevant art as limited to a narrow subset of what the claims of a patent cover. . . . And we have repeatedly ruled that what constitutes “analogous art” for section 103 purposes is tied to “the claimed invention.”

S.Ct. upholds status quo on enablement (posted 05/25/23)

UPDATE: On 1/10/24, the USPTO published 13) guidelines for implementing the Amgen v. Sanofi decision. The new guidelines state that the office will continue to use the framework of eight factors developed in In re Wands 14), referred to as the Wands factors to determine “reasonableness of experimentation.”

May 18, 2023: In Amgen Inc. v. Sanofi, the Supreme Court unanimously held that Sanofi's “genus” patents – patents directed to broad patents cholesterol-lowering monoclonal antibodies but directed to a specific antibodies – were invalid for lacking an enabling disclosure. Stated the court: “If a patent claims an entire class of processes, machines, manufactures, or compositions of matter . . . the patent's specification must enable a person skilled in the art to make and use the entire class.” Because the class being claimed covers potentially millions of antibodies and the specification only describes 26 specific antibodies, the specification fails this test. The court further explained that it is not required for a patent to explain how to make and use every single embodiment within a claimed class, but should give examples along with identifying specific characteristics that would allow someone else to make and use everything that the patent claims.

This ruling is consistent with prior Federal Circuit holdings that the entire scope of a claimed invention must be enabled. See, e.g., Liebel-Flarsheim v. Medrad 15) discussed here. However, in their Yale Law Journal article, "The Antibody Patent Paradox"16) the authors Lemley and Sherkow argue that the written description requirement is inconsistent with the science of antibody research. As we can now learn more about the molecular structure through DNA sequencing, the requirements for satisfying the written description requirement has grown more stringent and is incompatible with how scientists understand antigen science.17)

“Put less abstractly, researchers have little interest in the particular DNA sequence that gives rise to a particular antibody; they are instead interested in what the antibody does and how it does it. So, although function can make an antibody representative of a class, by establishing a group of molecules according to what they bind to and how, this class might have no “common structural features.” This representative-structure standard is, if not scientifically impossible, textually impractical. Demanding it is roughly equivalent to demanding that a sofware patent identify individual strings of computer code that every implementation must have in common, even if slight variations do the exact same thing.”

USPTO Proposes new rules for discretionary denials (posted 05/01/23)

A set of proposed rules for IPR discretionary denials was published by the USPTO to “build on and codify existing precedent and guidance on Director’s discretion to determine whether to institute [IPRs].” In summary the rules would:

  • Adopt a broader “substantial relationship test” to identify real parties in interest that must be disclosed.
  • Mandate disclosure of information on corporate control and funding, similar to Judge Connolly's new standing rules in the District of Delaware. This disclosure may be a precondition for requesting discretionary denial.
  • Codify the compelling merits exception to discretionary denial, which would apply when “the evidence of record . . . is highly likely to lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.”
  • Permit discretionary denials for
    • petitioner misconduct or gamesmanship.
    • For-profit entities that have not been sued and are non-competitive in the technical space of the patent.
    • patents with claims that substantially overlap claims to another patent that has previously reached final adjudication as to validity by a district court or PTAB.
  • Provide exemption from AIA reviews for small businesses.
  • Revise the PTAB's approach to serial or parallel petitions. The proposal will deny any IPR or PGR petition with at least one challenged claim that is the same as a challenged claim in a previously filed IPR, PGR, CBM filed by the same petitioner, a real party in interest or privy to that petitioner, a party with a significant relationship to the petitioner, or a party that previously joined an instituted IPR or PGR filed by the petitioner. Exceptions in the case where the earlier filed petition was discretionarily denied or not resolved on the merits and in extraordinary circumstances. Parallel petitions will be denied except for good cause. In cases where word/page limits restrict what can be argued in a single petition, higher fees will be available for expanded word limits.

Divided Fed. Cir. panel upholds PTAB's obviousness without de novo review (posted 04/14/23)

In Roku, Inc. v. Universal Elec’s, Inc., Case No. 2022-1058 (Fed. Cir. Mar. 31, 2023) (Reyna, Stoll, JJ.) (Newman, J., dissenting), the Federal Circuit reviewed a PTAB decision finding a patent for a universal remote control was patentable over prior art by looking only at the underlying factual issues leading to the obviousness decision, with those underlying factual issues being reviewed for substantial evidence, which is a determination as to whether a reasonable factfinder could have arrived at the same conclusion as to the facts.

Judge Newman dissented, arguing that de novo review of the obviousness–a legal question–was required and had the majority undertaken that required review, it would have resulted in a reversal of the PTAB's decision.

Fed. Cir.: Upholds web document as "publicly available"; vacates anticipation PTAB findings (posted 04/09/23)

Online reference was "publicly available"

February 1, 2021: In M & K Holdings, Inc., v. Samsung Elecs. Co., 18) the Fed. Cir. upheld a PTAB ruling that a S&K's video compression patent was invalid because prior art documents were available on JTC-VC's public website before the priority date of the patent. The court rejected M&K's argument that a person or ordinary skill in the art could not have located the prior art documents with reasonable diligence because the documents were not prominent and because the structure of JCT-VC's website, which lacked an adequate search function would have made finding the documents prohibitively difficult. Stated the court:

“The pertinent references in this case, Park and Zhou, were presented at JCT-VC development meetings. The Board found that these meetings were attended by between 200 and 300 interested persons and that the conferees had discussed Park and Zhou at the meetings. The Board also noted that JCT-VC meeting reports summarized the Park and Zhou discussions. Those discussions, the Board found, were conducted without any expectation of confidentiality. . . .”

“The law regarding public accessibility is not as restrictive as M&K suggests–a website's landing page is not required to have search functionality. Instead, given the prominence of JCT-VC, the dispositive question is whether interested users of the JCT-VC website could have located Park and Zhou through reasonable diligence. The Board found that they could have, and that conclusion is supported by substantial evidence.”

“Samsung was not required to show that interested artisans actually accessed Park and Zhou. . . .”

“Samsung was also not required to prove that the oral presentations . . . disclosed the exact material relating to Samsung's obviousness theories in the circumstances of this case.”

Anticipation not inherent in Obviousness

In /M & K Holdings, Inc., v. Samsung Elecs. Co., 19) the Fed. Cir. vacated the PTAB's finding that claim 3 of M&K's patent was invalid because its rationale for doing so, was based on anticipation despite the fact that Samsung did not put forth an anticipation argument with respect to claim 3. Stated the court:

“We agree with M&K that the Board deviated impermissibly from the invalidity theory set forth in Samsung's petition when it held that claim 3 was anticipated by WD4-v3. Although M&K was aware of the prior art used to invalidate claim 3 given the obviousness combination asserted against that claim, M&K was not put on notice that the Board might find that WD4-v3 disclosed all of the limitations in claim 3 and might invalidate claim 3 based on anticipation.

More . . .

Additional blurbs are accessible in categorized lists by accessing the Index link on the left (or, for small-format screens, below).

Skidmore v. Swift & Co., 323 US 134 (1944)
796 F.3d 1338 (Fed. Cir. 2015)
Packet Intelligence LLC v. NetScout Systems, Inc., 965 F.3d 1299 (Fed. Cir. 2020)
35 U.S.C. § 156 allows an applicant/patentee to extend a patent that covers a product whose market introduction is deleted due to the FDA approval process.
C.A. No. 20-985-GBW (D. Del)
IPR2023-00521 (PTAB August 30, 2023)
No. 2022-1548 (Fed. Cir. Dec. 15, 2023
IPR2021-009902; see pp. 14-21
11) , 12)
No. 2022-1906 (Fed. Cir. Dec. 4, 2023)
Federal Register, Vol. 89, No. 7, pp 1563-1566, Jan. 10, 2024
858 F.2d at 737
481 F. 3d 1371 - Court of Appeals, Federal Circuit 2007
132 Yale L. J. 994, 1035 (2023)
Id at 999
18) , 19)
985 F.3d 1376) (Fed. Cir. Feb. 1, 2021)

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