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.
Judge Gilstrap of the Eastern District of Texas denied defendant Genband US LLC’s motion for summary judgment that plaintiff Metaswitch Networks Ltd.’s patent, relating to the control of communication sessions in a telecommunications network, was invalid. Metaswitch argued that the prior art patent application is fundamentally different from the asserted patent and does not disclose even a single limitation of the asserted claim 8. In general, Metaswitch’s arguments related to the asserted patent and prior art reference having different network topologies.
On February 26, 2016, PTAB denied institution of Inter Partes Reviews (IPR) of two patents related to computer security software. Petitioner Symantec requested review of U.S. Patent Nos. 7,613,926 (the ’926 Patent) and 8,677,494 (the ’494 Patent), asserting that the patent did not properly establish their priority claims and, therefore, were invalid over prior patents issued to Patent Owner Finjan, Inc. The earlier of the two patents at issue, the ’926 Patent, is a continuation-in-part from an earlier patent owned by Finjan. The later of the two patents, the ’494 Patent is a continuation of the ’926 Patent and shares a common specification.
On December 2, 2015, the Federal Circuit denied a petition for rehearing en banc to consider whether a three-judge panel had correctly affirmed a judgment of invalidity under 35 U.S.C. § 101. The court determined that although the nature of the claimed invention is such that it should be patentable, the Federal Circuit’s hands are tied by the Supreme Court’s two-part test in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012). The court also expressed concern about the implications of decisions like this on medical diagnostics patents: Judge Lourie stated, “[i]t is said that the whole category of diagnostic claims is at risk. It is also said that a crisis of patent law and medical innovation may be upon us, and there seems to be some truth in that concern.”
The claims-at-issue were “directed to methods for detecting paternally-inherited fetal DNA in maternal blood samples, and performing a prenatal diagnosis based on such DNA.” Applying the Supreme Court’s two-step framework to § 101, the court found that the claims were directed to a natural phenomenon and failed to include an “inventive concept sufficient to ‘transform’ the claimed naturally occurring phenomenon into a patent-eligible application.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1376 (Fed. Cir. 2015) (quoting Mayo).
In a January 27, 2016 decision, the Patent Trial and Appeal Board (PTAB) denied institution of Inter Partes Review (IPR) of a patent under 35 U.S.C. § 103(a). Petitioner Allsteel Inc. sought review of U.S. Patent No. 8,024,091, which relates to a wall system that includes modules connected through a removable connecting strip. The asserted independent claim requires a connecting strip with a pair of spaced apart arms, each having a beaded portion. Further, the claim requires the beaded portions to have flanges fitting inside the arms of the connecting strip. The prior art, however, disclosed beaded portions with members fitting outside the arms. Petitioner contended that a skilled artisan would have found it obvious to reverse the positions of the members to fit inside the arms. Petitioner also relied on the testimony of its expert to show that it would have been obvious to reverse some inwardly projecting members so that the beaded portions would fit inside the arms.
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.