IP Newsflash

The Patent Trial and Appeal Board recently denied a patent owner’s request for rehearing of an institution decision, rejecting arguments that previously raised evidence of objective indicia should have been addressed in a petition for inter partes review (IPR).

The Federal Circuit reversed and remanded a Patent Trial and Appeal Board (the “Board”) decision declining to analyze patent claims as anticipated or obvious in an inter partes review (IPR) where the Board found the challenged claims to be indefinite. The court noted that IPXL-type indefiniteness at issue (claiming both an apparatus and a method of using the apparatus) does not necessarily prevent the Board from also deciding anticipation or obviousness. The court affirmed that the Board cannot cancel challenged claims for indefiniteness. The court reversed the Board’s determination that the claim term “digital processing unit” was a means-plus-function term and indefinite.

The Federal Circuit vacated a PTAB decision invalidating all challenged claims of U.S. Patent No. 8,908,842 (’842 Patent) and ordered the PTAB to reconsider whether the patent should have been disqualified from covered business method (CBM) review under the “technological invention” exception. In doing so, the Federal Circuit specifically asked the PTAB to explain what part one of the two-part exception means.

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 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.