In their monthly Law360 column on recent noteworthy Federal Circuit rulings, partners Jeremiah Helm and Sean Murray explore the Federal Circuit’s decision in Shockwave Medical v. Cardiovascular Systems.
The Federal Circuit’s ruling “provided an important, albeit short-lived, clarification to the role played by admissions made in the challenged patent, itself, to support an IPR challenge,” write Helm and Murray.
The authors trace the history of the case from its origins before the Patent Trial and Appeal Board (PTAB) to the recent Federal Circuit decision. The July ruling held that applicant admitted prior art (AAPA) itself cannot form the basis for an IPR challenge but may be cited as evidence of general background knowledge to supply missing claim limitations.
However, shortly following the Shockwave decision, the U.S. Patent and Trademark Office issued a memorandum indicating that the PTAB could no longer use general knowledge, including AAPA, to satisfy a missing claim limitation. This procedure change was based on an earlier decision in Qualcomm v. Apple, Helm and Murray explain.
“Shockwave illustrates the ongoing interplay between the USPTO and the Federal Circuit as they define and redefine the appropriate bases for IPR proceedings,” the authors write.
They also note that while the memorandum could be challenged in future litigation, presently “practitioners must account for both Federal Cirutie precedent and the USPTO’s guidance when citing AAPA in an IPR petition.”
Read the full article here.
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