In Ex Parte Hafner, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (the “Board”) reversed the Examiner’s rejection that claims directed to an energy transaction plan were subject-matter ineligible.  Ex parte Hafner et al., No. 2015-002200 (P.T.A.B. Jan. 31, 2017).  This decision provides guidance for navigating the changing landscape of software patents in a post-Alice era. 

The PTAB granted joinder of a time-barred petitioner to an IPR trial after the patent owner settled its dispute with the original petitioner in AT&T Services, Inc. v. Convergent Media Solutions, LLC, IPR2017-01237, Paper 10 (P.T.A.B. May 10, 2017).

A magistrate judge in the Eastern District of Texas recommended in Biscotti, Inc. v. Microsoft Corp., No. 2:13-CV-01015, DI 191 (E.D. Tex. May 11, 2017) that Microsoft should be estopped from asserting invalidity grounds that Microsoft raised or reasonably could have raised during IPR proceedings.

In a Final Written Decision in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2016-00130, Paper 35 (P.T.A.B. May 8, 2017), the PTAB found that petitioner Johns Manville (JM) was not estopped from raising its own company brochures as prior art in a follow-on IPR petition.  The PTAB held that at the time of JM’s earlier IPR petition, the brochures would not have been found by a reasonably skilled searcher conducting a diligent search.

The PTAB recently issued a final written decision on remand from the Federal Circuit, holding all claims to be unpatentable in Athena Automation Ltd., v. Husky Injection Molding Sys. Ltd., IPR2013-00290, Paper 61 (P.T.A.B. Apr. 28, 2017). This decision reversed the PTAB’s original decision that certain claims were not anticipated by a reference that referred to disclosures from another document.

Four recent Final Written Decisions from the PTAB supported patentability on the rare basis of “secondary considerations of nonobviousness” in Varian Medical Systems, Inc. v. William Beaumont Hospital, IPR2016-00162, Paper 69; IPR2016-00166, Paper 69; IPR2016-00170, Paper 69; IPR2016-00171, Paper 81 (P.T.A.B. May 4, 2017).

The USPTO Director granted a request to extend a missed deadline for an appeal of an IPR decision to the Federal Circuit due to the patent owner’s excusable neglect in Mitsubishi Cable Industr., Ltd. v. Goto Denshi Co., Ltd., IPR2015-01108, Paper 28 (P.T.A.B. May 4, 2017).

On April 4, 2017, the Ninth Circuit ruled that Urban Outfitters and Century 21 (collectively “Urban”) were liable for willful infringement of a copyrighted fabric design owned by Unicolors Inc.  Unicolors is a Los Angeles based company that designs and sells fabric to customers in the apparel market. Urban Outfitters is a retail company with over 500 stores worldwide.  Century 21 is a department store that purchases products from Urban Outfitters. 

In the fashion and beauty world, the copying of higher-priced brands is widespread. While in fashion, the term for copies of designer products is “knockoffs,” in beauty, the term is “dupes.” Whether it is a colloquial use of the word “dupe” or an abbreviation of “duplicate,” to beauty brand consumers the word dupe has come to mean a cheaper alternative to higher-end products.

The sale of a product prior to filing a patent application, or “on-sale bar,” has long been a potential barrier to obtaining a patent in the United States.  Especially in the biotechnology space, which can involve a long development cycle and regulatory approval cycle, pre-clinical manufacturing and testing activity has the potential to limit patent rights by triggering the on-sale bar.