IP Newsflash

The Patent Trial and Appeal Board granted a request for rehearing of a final written decision in which it had originally determined that the challenged were not unpatentable. On rehearing, the board found that petitioner’s reliance on applicant admitted prior art (AAPA) was proper because it was not the sole basis of any ground in the inter partes review proceeding.

The Patent Trial and Appeal Board denied a petition to institute inter partes review, finding there was no reasonable likelihood that petitioners would prevail on their obviousness challenges. In rendering its decision, the PTAB rejected petitioners’ proposed claim construction as being contrary to plain meaning and being improperly grounded in irrelevant embodiments. The PTAB also declined to rely on statements concerning a device depicted in a video because those statements fell outside the ambit of prior art under 35 U.S.C. § 311(b). Finally, while the majority opinion declined to address the issue of whether the video itself was a printed publication, one judge found, in concurrence, that a publicly accessible video can qualify as a printed publication under the statute. More details regarding those rulings are provided below.

The Federal Circuit reversed an obviousness determination from the Patent Trial and Appeal Board (PTAB) for relying on an argument raised by the petitioner for the first time on remand. In so doing, the court held that the petitioner forfeited its new unpatentability theory because it was responsive to a claim construction put forth by the patent owner prior to the first appeal. 

A recent board decision denying inter partes review serves as a reminder that an expert opining on obviousness must at least meet the definition of an ordinarily skilled artisan.

In the weeks preceding a recent Hatch-Waxman bench trial, a district court excluded portions of an expert’s opinion on obviousness that addressed internal documents and inventor testimony concerning the “inventors’ path” to arriving at the invention, finding that such portions of the opinion amounted to impermissible hindsight. 

In a recent inter partes review (IPR), a patent owner overcame a facially persuasive obviousness challenge by relying on evidence from an earlier litigation to establish objective indicia of nonobviousness. 

Chief Judge Stark granted a patent owner’s motion for summary judgment of inter partes review (IPR) estoppel, holding that obviousness defenses based on a prior art product could not be asserted because a prior art publication disclosing all of the product’s relevant features could have been raised during an IPR that reached a final written decision.

The Patent Trial and Appeal Board (PTAB) recently designated three more decisions as informative, bringing the total number of informative decisions to 13 for 2019. Two decisions—one final and one on institution—address examples of insufficient rationale for combining prior art references to support obviousness under 35 U.S.C. § 103. The third decision applies the United States Patent and Trademark Office’s (USPTO) 2019 guidance on patent eligibility under 35 U.S.C. § 101 to reverse an examiner rejection, where the Board found that the claimed computer-implemented method was not an abstract idea.