GRÜNENTHAL GMBH v. ANTECIP BIOVENTURES II LLC, PGR2019-00026, -00027, 00028 (PTAB, July 28, 2020)

The PTAB issued decisions in a trio of post-grant reviews. One of the defenses put forward by the Patent Owner was that the asserted references did not qualify as printed publications. The analyses by the PTAB is largely the same in each decision, and therefore only PGR2019-00026 will be cited.

Patent Owner contended the Petitioner had not established that the references were publicly available. Petitioner relied upon dates set forth in the references themselves and a declaration from a technical expert who testified on availability of the references. Slip op. at 20. Patent owner contended that the dates in the references are not enough on their own to establish public availability, but did not provide any evidence that contradicted Petitioner’s evidentiary showing. Slip op. at 20-21. Ultimately, the PTAB sided with the Petitioner, and held that that a preponderance of the evidence showed that the references were prior art printed publications. Slip op. at 22.

Uniloc 2017 LLC v. Hulu, LLC, Netflix, Inc., Appeal No. 2019-1686 (Fed. Cir., July 22, 2020).

Uniloc owned a patent entitled “System and Method for Adjustable Licensing of Digital Products.” In an IPR, petitioners Hulu and Netflix successfully challenged Uniloc’s claims. Uniloc, however, also filed a motion to amend to add substitute claims. Petitioner Hulu challenged the substitute claims under section 101 grounds.

Uniloc responded by arguing that Hulu could not raise section 101 in an IPR, but did not address Hulu’s arguments on the merits. Ultimately, the PTAB determined that the substitute claims were patent ineligible on Section 101 grounds and denied Uniloc’s motion to amend. Continue Reading Section 101 Plays a Role in IPRs

Hunting Titan, Inc. v. Dynaenergetics Europe GMBH, IPR2018-00600 (July 6, 2020)
Designated Precedential on July 6, 2020

Petitioner Hunting Titan challenged Patent Owner Dynaenergetics’ claims based upon anticipation and obviousness. During the trial, Patent Owner filed a motion to present substitute claims. Petitioner opposed the substitute claims, but only presented arguments based upon obviousness. Continue Reading IPR Decisions Are to Rely on the Adversarial Process

In re Boloro Global Ltd., Appeal Nos. 2019-2349, -2351 and -2353 (Fed. Cir., July 7, 2020).

Boloro appealed to the PTAB final rejections in three patent applications, which the PTAB ultimately affirmed. On appeal of the PTAB decisions to the Federal Circuit, Boloro moved to vacate the PTAB decisions and remand the appeals to different panels of the PTAB.

The Director opposed the motions to vacate and remand on the grounds that the Director “possesses ‘complete control over initial examination’ and could at any time prior to the Board proceedings have directed the issuance of Boloro’s patents but did not, consistent with the Board’s subsequent decisions.” Slip op. at 2-3. The Federal Circuit was not persuaded and granted Boloro’s motions. The court noted that the Director conceded that the APJ’s appointed were unconstitutional, and thus the was no basis to depart from the general rule. Accordingly, no matter the type of proceeding, any PTAB decision issued before Arthrex and under appeal is subject to vacatur and remand.

DTN, LLC v. Farms Technology, LLC,  IPR2018-01412, -01525 (June 14, 2019)

On June 11, 2020, the PTAB designated as precedential its 2019 decision in  DTN, LLC v. Farms Technology, LLC. The decision concerns the scope of the obligation to file agreements with the Patent Office under 35 U.S.C. §317(b) when seeking a termination.

The statute reads as follows:

Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in writing and a true copy of such agreement or understanding shall be filed in the Office before the termination of the inter partes review as between the parties. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause. Continue Reading The Obligation to Submit Agreements in IPRs Is Broad

General Electric Co. v. Raytheon Technologies Corporation, fka United Technologies Corporation, Case No. 19-1012.

On February 24, 2020, we reported on GE’s petition for certiorari to the Supreme Court. The petition sought review of the Federal Circuit’s doctrine on Article III standing for petitioners to appeal IPR decisions, which essentially required a possibility of an infringement suit against the petitioner. The petition was based in large part on Federal Circuit Judge Todd Hughes’ views that the Federal Circuit applied too strict a standard.

On May 26, 2020, the Supreme Court denied the petition for certiorari.

On May 27, 2020, the Federal Register published proposed rule changes to trial procedures before the PTAB. The rule changes address and codify the following:

(1) Institution will be on all challenged claims or none, and on all asserted grounds if there is institution;

(2) Permit sur-replies to principal briefs, and response and replies to decisions on institution; and

(3) Eliminate the presumption in favor of the petitioner at the institution phase for a genuine issue of material fact created by testimonial evidence submitted in a preliminary response from a patent owner.

Comments to the rules must be received by the USPTO by June 26, 2020.

The rules are published at 85 FR 31728 (May 27, 2020), and can accessed here.

Esip Series 2, LLC v. Puzhen Life USA, Appeal No. 2019-1659 (Fed. Cir., May 19, 2020)

Puzhen petitioned for an IPR against Esip’s patent relating to a combining of germicidal protection and aromatic diffusion in an enclosed space. Some of the claims were held to be obvious by the PTAB and the Federal Circuit affirmed on that issue. Continue Reading Another Non-Appealable Issue

Virnetx Inc. v. Cisco Systems, Inc., Appeal No. 2019-1671 (Fed. Cir., May 13, 2020).

Inter partes reexamination was a non-trial procedure that allowed third parties to participate in patent reexamination, and has now been replaced by inter partes and post-grant reviews. Inter partes reexaminations were conducted before a panel of examiners, and then subject to review by the PTAB in an appeal capacity. Here, Cisco and the Director of the USPTO sought rehearing of a decision that extended the Arthrex doctrine to inter partes reexaminations. Continue Reading Arthrex and Reexamination

Caterpillar Paving Products Inc. v. Wirtgen America, Inc., Appeal No. 2020-1261 (Fed Cir., May 6, 2020).

On May 5, 2020, the Federal Circuit issued a precedential order holding that IPR petitioners cannot seek the Arthrex do-over. One day later, the Federal Circuit placed another limitation on the applicability of the Arthrex doctrine. Continue Reading Another Arthrex Limit