On July 14, 2019, the USPTO published a second update to the AIA Trial Practice Guide with additional guidance about trial practice before the Board. This latest update, while lengthy, does not introduce many significant changes from established practice, but instead encapsulates decisions the Board has designated precedential or informative and other established developments since the last update. The procedures for addressing multiple challenges to a patent, however, are a new and noteworthy addition.
Before Reyna, Chen, and Hughes. Appeal from the Patent Trial and Appeal Board (“PTAB”).
Summary: A claimed method must be expressly described as a whole in order to satisfy the written description requirement.
CISCO SYSTEMS, INC. v. TQ DELTA, LLC
Before Newman, Linn, and Wallach. Appeal from Patent Trial and Appeal Board.
Summary: It is improper to read limitations from a preferred embodiment described in the specification into claims without any clear indication that the patentee intended the claims to be limited.
TQ Delta LLC v. Dish Network LLC
Before: Newman, Linn, and Wallach. Appeal from the Patent Trial and Appeal Board.
Summary: The rights of parties in an IPR are not violated when the PTAB provides adequate notice of the PTAB’s understanding of the claim construction during the oral hearing.
Dish Network (“Dish”) petitioned for inter partes review of a patent owned by TQ Delta, LLC (“TQ Delta”) which describes a method to manage the power of a transceiver in sleep mode and to wake up the transceiver from sleep mode. The PTAB found the claims were obvious.
GENERAL ELECTRIC CO. V. UNITED TECHNOLOGIES CORP.
Before Reyna, Taranto, and Hughes. Appeal from the Patent and Trial Appeal Board.
Summary: A petitioner who loses an IPR must proffer specific evidence of competitive injury or economic loss to establish Article III standing to appeal to the Federal Circuit.
WESTECH AEROSOL CORPORATION v. 3M COMPANY
Before Lourie, Mayer, and Reyna. Appeal from the United States District Court for the Western District of Washington.
Summary: To establish proper venue, a plaintiff must allege specific facts showing that the defendant has a regular and established place of business physically located in the judicial district.
Westech sued 3M for patent infringement. In a motion to dismiss, 3M argued that venue was improper because it did not have a regular and established place of business in the judicial district. In response, Westech argued, in part, that the presence of 3M’s sales representatives and actual sales in the district supported venue.
ENZO LIFE SCIENCES, INC. v. ROCHE MOLECULAR SYSTEMS, INC.
Before Prost, Reyna, and Wallach. Appeal from the United States District Court for the District of Delaware.
Summary: Broad patent claims were invalid as not enabled because the relevant art was unpredictable and practicing the full scope of the claims would require undue experimentation.
Enzo filed suits alleging infringement of the ’180 Patent by Roche, Becton Dickinson, and Abbott, and infringement of the ’405 Patent by Abbott alone. Both patents relate to the use of non-radioactively labeled polynucleotides in nucleic acid hybridization and detection applications. The district court granted summary judgment holding that the asserted claims of the ’180 Patent and ’405 Patent were not enabled. Enzo appealed.
Before Moore, Reyna, and Stoll. Appeal from the Patent Trial and Appeal Board.
Summary: Written description support for a claimed genus depends on the criticality or importance of the expressly disclosed species and the predictability of the relevant technology.
Global IP Holdings, LLC (Global) owns U.S. Patent No. 8,690,233 directed to carpeted automotive vehicle load floors. The ’233 patent claims a load floor with thermoplastic skins and a thermoplastic cellular core. Global filed a reissue application seeking to broaden the claims, replacing the term “thermoplastic” with “plastic.” Global submitted a declaration stating that use of plastic other than thermoplastic for vehicle load floors was known in the art at the time of the invention.
ATHENA DIAGNOSTICS, INC. v. MAYO COLLABORATIVE SERVICES, LLC
Before Prost, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll. Petition for Rehearing En Banc.
Summary: The Federal Circuit voted 7-5 not to review en banc the issue of whether diagnostic claims are eligible for patent protection under § 101. The Federal Circuit’s denial of en banc review included eight different opinions, all of which indicate that the Supreme Court and/or Congress should intervene to clarify or modify the patent eligibility standards for medical diagnostic claims. Each of these opinions is summarized below:
KOLCRAFT ENTERPRISES, INC. V. GRACO CHILDREN’S PRODUCTS, INC.
Before Moore, Reyna, and Chen. Appeals from the Patent Trial and Appeal Board.
Summary: Inventor testimony of prior conception must be independently corroborated.
