Knobbe/Martens: Intellectual Property Law

PTAB

Nexus Analysis May Be Based on Novel Combination of Known Elements Considered as a Whole

September 13, 2019 Sean S. Kim and Mark Kachner

HENNY PENNY CORPORATION v. FRYMASTER LLC

Before Lourie, Chen, and Stoll.  Appeal from the United States Patent and Trademark Office.

Summary: With respect to secondary considerations of nonobviousness, nexus may be satisfied by showing that objective evidence is tied to a novel combination of known elements.

 

Decision of PTAB to Reconsider Earlier Decision Instituting Inter Partes Review Is Not Reviewable by the Court of Appeals

BIODELIVERY SCIENCES INTL. v. AQUESTIVE THERAPEUTICS, INC.

Before Newman, Lourie, and Reyna.  Appeal from the Patent Trial and Appeal Board (PTAB).

Summary:  The PTAB has the discretion to not institute inter partes review even if there is a showing of reasonable likelihood of success with respect to at least one challenged claim.  The PTAB’s institution decision is not appealable under 35 U.S.C. § 314(d).

 

PTAB’s Characterization Of Petitioner’s Argument Did Not Introduce New Theory Of Invalidity

August 21, 2019 Mark Kachner and Brandon G. Smith

ARTHREX, INC. V. SMITH & NEPHEW ET AL.

Before Dyk, Chen, and Stoll.  Appeal from the U.S. Patent and Trademark Office

Summary:  The Board’s invalidity decision does not need to track the exact wording in the IPR petition so long as the Board’s characterization of the invalidity theory is consistent with the theory presented in the petition.

Corresponding Structure in the Specification Does Not Render a Means-Plus-Function Term Structural

August 13, 2019 Clayton R. Henson and Adam Powell

MTD PRODUCTS INC. V. IANCU

Before Reyna, Taranto, and Stoll.  Appeal from the PTAB.

Toro petitioned for IPR of an MTD Products patent relating to lawnmowers.  MTD argued the term “mechanical control assembly” was a means-plus-function term.  The Board concluded the disputed phrase was primarily functional, but that a personal skilled in the art would have understood the term to denote structure based on the specification and prosecution history. Thus, the Board determined the term was not a means-plus-function term and held the challenged claims were obvious.

 

Mere Potential for Future Certiorari Petition After Remand Does Not Prevent Triggering Estoppel of Inter Partes Reexamination

August 1, 2019 Suyoung Jang and Christie Matthaei

VIRNETX INC. v. APPLE INC.

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

Summary: Failure to petition for certiorari on the issue of invalidity triggers estoppel of parallel inter partes reexamination proceedings even if Federal Circuit remands on other non-validity issues.

 

IPRs of Pre-AIA Patents Are Not Unconstitutional Takings

July 31, 2019 Victoria E. Ellis and Andrea Cheek

CELGENE CORPORATION v. PETER

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

Summary: Retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.

 

Prior Art Must Be Publicly Accessible, Not Actually Accessed

July 17, 2019 Samuel I. Cockriel and Adam Powell

SAMSUNG ELECTRONICS CO., LTD. v. INFOBRIDGE PTE. LTD.

Before Newman, Schall, and O’Malley.  Appeal from the Patent Trial and Appeal Board.

Summary: A reference must be publicly accessible, not actually accessed, before the critical date to qualify as prior art.

 

USPTO Publishes PTAB Trial Practice Guide Update

July 16, 2019 Bridget A. Smith

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.

 

 

 

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.

 

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