Clayton R. Henson

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.  

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.  

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.

Before Prost, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll. Dissenting opinion to denial of petition for rehearing written by Reyna and joined by Newman and Lourie.  Summary: The Federal Circuit elected not to review en banc the issue of whether servers or similar equipment in third-party facilities constitute a regular and established place of business for purposes of determining whether venue is proper under 28 U.S.C. § 1400(b).  The dissenters argued that the Federal Circuit’s denial sidestepped the purpose of mandamus relief and left unanswered a critical question that affects venue.   

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Before O’Malley, Reyna, and Hughes.  Appeal from the Trademark Trial and Appeal Board. Summary: Courts should not give too much weight to evidence purporting to show a lack of actual confusion in an ex parte proceeding.