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.
On April 3, 2017, the Patent Trial and Appeal Board (PTAB) declined to institute post-grant review (PGR) of U.S. Patent No. 9,291,250 (the “’250 patent”), finding that it was not eligible for PGR. The petitioner argued that the ’250 patent, which relates to improved bicycle chainrings, was invalid as obvious under § 103 and because it failed to satisfy the written description and definiteness requirements under § 112.
Under the America Invents Act, post-grant reviews are only available for patents having at least one claim with an effective filing date of March 16, 2013 or later. If this condition is not satisfied, the Patent Trial and Appeal Board (PTAB) must dismiss the post-grant review petition. While this standard appears to be simple on its face, it becomes a more complicated issue when a child patent (continuation or divisional) does not contain the same disclosure as its parent patent. In David’s Bridal v. Jenny Yoo, the PTAB addressed this exact issue on a design patent, holding that the parent patent’s disclosure sufficiently supported the “new matter” disclosed in the child patent and denied the post-grant review petition.
The Patent Trial and Appeal Board (PTAB) recently reaffirmed its interpretation of “reasonably could have raised” in applying 35 U.S.C. § 315(e)(1) estoppel. The decision provides a considered analysis of the scope of Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016) and the legislative history of the America Invents Act (AIA) related to estoppel in post-grant proceedings at the United States Patent and Trademark Office (USPTO).
The Federal Circuit, in a 2-1 opinion, recently affirmed the Patent Trial and Appeal Board’s (PTAB) regulation that the PTAB only has to provide a written opinion on the claims actually instituted for inter partes review, not on every claim raised in the original IPR petition. Petitioner Synopsys submitted an IPR petition to invalidate a number of claims in Mentor’s patent—the same patent asserted against Synopsys in litigation. The PTAB instituted the IPR on roughly half of the submitted claims and ultimately invalidated only three claims. Synopsys appealed and argued that the AIA requires a written opinion by the PTAB on all claims submitted in the original petition, not just those claims instituted by the PTAB for review. The Federal Circuit rejected Petitioner’s argument, noting the AIA “is quite clear that the PTO can choose whether to institute inter partes review on a claim by claim basis.” After that initial decision by the PTAB, the court held the AIA only requires the PTAB to provide a written opinion on “challenged” claims—“claims for which inter partes review was instituted.” The Federal Circuit recognized “the statue would make little sense if it required the Board to issue final decisions addressing patent claims for which inter partes review had not been initiated.”
Synopsys v. Mentor Graphics, Corp., C. A. No. 14-1516, 14-1530 (Fed. Cir. Feb. 10, 2016)
The PTAB has recently designated two of its prior decisions as precedential. These are only the second and third decisions from AIA reviews to be designated as such by the Board. The first decision, LG Electronics Inc. v. Mondis Tech Ltd., relates to the meaning of the term “served with a complaint” in 35 USC § 315(b). In its decision denying institution of LG’s IPR petition, the Board held that LG’s petition, filed within one year of Mondis’s second complaint, but more than a year after Mondis’s first complaint alleging infringement of the patent at issue, fell outside of the one-year time bar for filing an inter partes review. The Board declined “LG’s invitation to amend § 315(b) by inserting either ‘latest’ or ‘second’ into the statute,” and instead interpreted “a complaint” plainly as any complaint. LG had also argued that the settlement agreement following the first lawsuit did not cover all of its accused products and that, following dismissal of that suit, the parties were left in the same legal position with respect to the “unreleased products” as before the complaint was filed. The Board rejected that argument, finding that at least some of the claims were dismissed with prejudice, and it was LG’s decision to exclude products from its settlement.
PTAB, in a rare move, granted-in-part and denied-in-part the Petitioner AVX Corp.’s Request for Rehearing and instituted an inter partes review of a Greatbatch Ltd. patent on a pacemaker component. The Request asserted that the Board misapprehended or overlooked certain matters in its decision on institution. The same three-judge panel of the PTAB that had previously denied AVX’s request for inter partes review under the America Invents Act in August, granted the company’s request for rehearing and agreed that the first decision was erroneous. In doing so, the Board agreed that it had overlooked Petitioner’s previously presented arguments about the disclosure in the alleged prior art. The Board held that upon properly considering AVX’s arguments, it was persuaded that AVX had shown that several claims of the patent are likely invalid.
The U.S. Supreme Court has decided to review the claim construction standard used by the Patent Trial and Appeal Board (PTAB) in AIA reviews In 2013, the PTAB invalidated a Cuozzo Speed Technologies patent through an inter partes review. Cuozzo appealed the decision to the Federal Circuit, which affirmed the PTAB’s use of the broadest reasonable interpretation standard for claim construction in an AIA review. Cuozzo is now asking the Supreme Court to review the use of the PTAB’s claim construction standard and to use the same standard used in district court patent cases. The PTAB construes claims broadly while district courts use a narrower standard. The PTAB’s standard, Cuozzo asserts, results in too many patent claims being invalidated. Cuozzo contends construing patent claims with their broadest reasonable interpretation allows more prior art to be used against the challenged claims increasing the chance the patent claim will be invalidated.