The Patent Trial and Appeal Board (PTAB) denied a petitioner’s request for rehearing of its decision declining institution of inter partes review of a patent owned by Bose Corporation (“Patent Owner.”) The PTAB upheld its finding that the supporting declaration of Petitioner’s expert relied on “a far too general reason” to combine prior art, was conclusory, and engaged in impermissible hindsight.
On January 12, 2018, the Federal Circuit vacated and remanded a district court summary judgment determination of no invalidity, as well as jury findings of willfulness and damages, in its decision in Exmark Manufacturing, Co. v. Briggs & Stratton Power Products Group, LLC. In particular, the Federal Circuit held the district court erred when it granted summary judgment of no invalidity to Exmark Manufacturing, Co. (“Exmark”) based solely on the fact that its patent survived multiple reexaminations involving the same art. The Federal Circuit also found insufficient evidence to support the jury’s damages award, and held the district court abused its discretion when it excluded certain evidence related to willfulness.
The Patent Trial and Appeal Board (PTAB) recently denied institution of an inter partes review (IPR), holding that the patent at issue had an effective filing date antedating the primary prior art reference. The petitioners–ESET, LLC and ESET spol s.r.o. (collectively, “ESET”)–filed an IPR petition against U.S. Patent No. 8,079,086 (the “’086 Patent”). ESET concurrently moved for joinder with FireEye, Inc. v. Finjan, Inc., IPR2016-01444 (the “01444 proceeding”), which also challenged the ’086 Patent. The ’086 Patent is directed to systems and methods of protecting computers from malicious operations controlled by remotely operable code. The ’086 Patent is a continuation-in-part of U.S. Patent No. 7,613,926 (the “’926 Patent”), which was the subject of Palo Alto Networks, Inc. v. Finjan, Inc., IPR2016-00145 (the “00145 proceeding”).
Judge Denise Casper of the District of Massachusetts recently issued an order concluding that estoppel did not bar prior art from invalidity disclosures served before the filing of the IPR petition because the prior art was not raised during the IPR.
The Patent Trial and Appeal Board (PTAB) denied Pfizer, Inc.’s (“Petitioner”) petition to institute an inter partes review (IPR) of the sole claim of Biogen Inc.’s (“Patent Owner”) U.S. Patent 8,329,172 (the “’172 Patent”). That claim covers a method of treating B-cell lymphoma by using a certain chemotherapy followed by maintenance therapy with the drug Rituxan. The petition relied on three potential prior art references, including a document identified as IDEC Pharmaceuticals and Genentech, Inc.’s 1997 product label for Rituxan. Patent Owner argued that the record contained no evidence that the document identified as the product label was publicly available before the patent’s priority date.
On November 1, 2017, District of Delaware Judge William Bryson granted defendants D&M Holdings Inc., D&M Holdings U.S. Inc. and Denon Electronics (USA), LLC’s (collectively, “D&M”) motion to strike part of the expert opinion of plaintiff Sonos, Inc.’s damages expert.
On October 23, 2017, a Patent Trial and Appeal Board (PTAB) panel granted Petitioner’s Motion to Submit Supplemental Information (“the Motion”) on the publication date of an asserted reference. At the time the Petition was filed, the effective filing date of the challenged claims was November 6, 1997. After the Institution Decision, however, the Patent Office issued a Certificate of Correction for a related patent that “may result in according the challenged claims an effective filing date of January 29, 1997.” Accordingly, Petitioner filed the Motion to submit information that would “further confirm the prior art status” of the reference. Critical to the PTAB’s decision was that (1) the original Petition—despite focusing on the November 6 date—contended that the reference was “published by at least January 17, 1997,” and (2) the Patent Office’s Certificate of Correction was a “post-filing change of circumstances.”
In a recent decision, Judge Schroeder of the Eastern District of Texas rejected the argument that decisions of the United State Patent and Trade Office (USPTO) invalidating patents held infringed by a jury means that a defendant cannot be held liable for willful infringement where appellate review of the invalidity decisions is still ongoing.