In an August 18, 2017, decision, the Patent Trial and Appeal Board (PTAB or the “Board”) granted a patent owner’s request for rehearing and modified a previously issued Final Written Decision to hold that the petitioner failed to show that any of the challenged claims were unpatentable.
Under 35 U.S.C. § 102, the on-sale bar generally holds that the sale of a patented invention more than one year before the filing date invalidates the patent. Before the America Invents Act (AIA), courts held that confidential sales of the patented invention triggered the on-sale bar—no public disclosure of the invention or the sale was required. The AIA—which applies to patents filed after March 16, 2013—amended §102 to state that a patent is invalid if it was “in public use, on sale, or otherwise available to the public before the effective filing date.” In Helsinn Healthcare v. Teva Pharmaceuticals, interpreting the on-sale provision under the AIA for the first time, the Federal Circuit held that the AIA’s on-sale bar similarly does not require that the sale of the patented invention publicly disclose the details of the invention if the existence of the sale is public.
A Patent Trial and Appeal Board (PTAB) panel has denied institution of an inter partes review proceeding because the petitioner did not establish that key references were properly qualified as printed publications under 35 U.S.C. § 102(b). The panel’s decision centered on whether a copyright notice, alone or in combination with a catalog listing, provided sufficient evidence of public availability on a particular date. The petitioner asserted unpatentability on four grounds of obviousness, each ground relying on one of two reference manuals. To show that the manuals were prior art, the petitioner cited copyright notices and Internet library catalog listings for each.
A Patent Trial and Appeal Board (PTAB) panel has denied institution of inter partes review proceedings because the petitioner did not establish a patent qualified as prior art under 35 U.S.C. § 102(e). PTAB was not persuaded that the putative 102(e) patent’s issued claims had written description support in the provisional application from which the patent claimed priority.
Clearlamp, LLC filed a patent infringement action against LKQ Corporation (LKQ), who, in turn, counterclaimed seeking declaratory judgments of noninfringement and invalidity. During the pendency of this case, the parties participated in an inter partes review (IPR), during which the Patent Trial and Appeal Board found that several claims of the patent-at-issue were unpatentable as obvious in view of three prior art references. In the instant opinion, the Court grants LKQ’s motion for summary judgment on invalidity and denies the parties’ remaining motions on validity and noninfringement. The key issue addressed by the Court in deciding these summary judgment motions was whether LKQ was estopped under 35 U.S.C. § 315(e)(2) from combining the datasheet of a prior art product, which was not raised during the IPR proceeding, with the three prior art references used to invalidate other patent claims.