Knobbe/Martens: Intellectual Property Law

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A Claimed Method Fails to Satisfy Written Description If It Is Not Described as a Whole

QUAKE v. LO

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.

 

Federal Circuit Rejects Claim Construction That Improperly Narrowed the Claim

July 11, 2019 Bita Kianian and Kendall Loebbaka

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.

 

Federal Circuit Holds Adequate Notice of PTAB's Claim Construction Provided Through Oral Hearing

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. 

Standing to Appeal IPR Denied Where Petitioner Failed to Provide Evidence of Competitive Harm and Economic Loss

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.

 

Federal Circuit Rejects Written Description Analysis That Ignored Relevant Factors

July 8, 2019 Sean S. Kim and Jeremy Anapol

IN RE: GLOBAL IP HOLDINGS LLC

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.  

Discretionary Denial as a Case Management Tool: PTAB Requires Petitioner to Rank its Six IPR Petitions by Merit and then Institutes on only Highest Ranked Petition

Following the Supreme Court’s decision in SAS v. Iancu, which held that an IPR institution is an “all-or-nothing” proposition, the PTAB lost its ability to rely on “partial institutions” as a case management tool (e.g., by denying institution of so-called redundant grounds).  In recent months, however, we have observed a variety of ways in which the PTAB has applied its discretionary authority under § 314(a) to deny institution of IPRs, including for case management purposes.  A broad application of the PTAB’s authority for case management is illustrated in Comcast Cable Communications, LLC v. Rovi Guides, Inc., IPR2019-00225, IPR2019-00226, IPR2019-00227, IPR2019-00228, IPR2019-00229.  

A Single Prior Art Reference Can Render a Patent Obvious

GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD INC.

Before Prost, Lourie, and Wallach.  Appeal from the Patent Trial and Appeal Board (PTAB).

Summary:  A single prior art reference can render a patent obvious if it would have been obvious to modify that reference to arrive at the claimed invention.

 

State Sovereign Immunity Does Not Bar an IPR

REGENTS OF THE UNIV. OF MINN. v. LSI CORPORATION

Before Dyk, Wallach, and Hughes.  Appeal from the Patent Trial and Appeal Board.

Summary: State sovereign immunity does not apply to IPR proceedings asserted against patents owned by or assigned to states, regardless of whether the state has asserted the patent claims in a district court litigation. 

 

One-Year Clock for Filing IPR Petition Applies to Litigants and Parties That Become Privies of the Litigant Prior to Institution

June 14, 2019 Clayton R. Henson and Mark Kachner

POWER INTEGRATIONS, INC v. SEMICONDUCTOR COMPONENTS

Before Prost, Reyna, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: An IPR is time-barred under 35 U.S.C. § 315(b) if, at the time of institution, the petitioner is in privity with a party who was served with a complaint for patent infringement over a year before the petition was filed.

The More Complex the Harder to Show Obvious

June 14, 2019 David J. Grant and Nicole R. Townes

SAMSUNG ELECTRONICS CO., LTD. v. ELM 3DS INNOVATIONS, LLC

Before Moore, Reyna, and Chen. Appeal from the Patent Trial and Appeal Board.

Summary: If the technology is complex, a party may be required to provide more evidence of a reasonable expectation of success for obviousness.  

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