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…
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
Grit Energy Solutions, LLC v. Oren Technologies, LLC, Appeal No. 2019-1063 (Fed. Cir.. April 30, 2020).
Grit Energy filed a petition for inter partes review against Oren’s U.S. Patent No. 8,585,341 pertaining to systems of storing and discharging proppants, such as sand. The PTAB found the Grit Energy did not satisfy its burden to show that the claims of the ‘341 patent were obvious.…
Continue Reading The Federal Circuit Finds Article III Standing
Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corp., Appeal No. 2018-2273 (Fed. Cir., April 23, 2020).
Argentum and other petitioners filed IPRs against Novartis’ patent related to methods of treating relapsing-remitting multiple sclerosis. Novartis prevailed before the PTAB. All petitioners then settled but for Argentum.…
Continue Reading Article III Standing Strikes Again
Thryv, Inc. v. Click-To Call Technologies, LP, et al., 590 U.S. ___, Case No. 18-916 (slip op., April 20, 2020)
IPR petitioner Thryv challenged patent owner Click-To-Call’s patent and several claims were cancelled. Click-To-Call sought judicial review of the IPR institution decision.
Click-To-Call alleged that a 2001 lawsuit between predecessor companies triggered the Section…
Nike, Inc. v. Adidas AG, Appeal No. 2019-1262 (Fed. Cir., April 9, 2020)
The PTAB has never shown an affinity for permitting amendments in IPRs. This appeal marks the second time that a proposed amendment in an IPR was before the Federal Circuit for review.…
Continue Reading No Notice, No Decision
Ex parte Grillo-Lopez, Appeal No. 2018-006082 (April 7, 2020).
On April 7, 2020, The PTAB denied rehearing in Ex parte Grillo-Lopez (August 28, 2019) and issued a precedential decision explaining the denial. The appeal concerned final rejections that the examiner issued based upon an FDA transcript, which applicants argued was not prior art. The FDA transcript in question was the subject of previous IPRs, where the PTAB held that the FDA transcript was not shown to have been a printed publication. Opinion at 2, fn 2.…
Continue Reading IPRs and Patent Prosecution Are Not the Same
Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 2018-2140 (Fed. Cir., March 23, 2020).
In a 62-page order and accompanying opinions, the Federal Circuit denied an en banc rehearing of the Arthrex decision from October 2019. The Arthrex decision concerned the constitutionality of the PTAB, and is discussed in detail in our November 1, 2019 post.…
Continue Reading Arthrex Redux
Image Processing Technologies LLC v. Samsung Electronics Co., LTD. et al., Appeal Nos. 2018-2156, 2019-1408, 2019-1485 (Fed. Cir. March 2, 2020).
The Federal Circuit vacated and remanded the PTAB’s decisions against Image Processing’s U.S. Patent No. 8,983,134 in IPR2017-00353 and IPR2017-01218. The vacatur and remand was based upon the Federal Circuit’s earlier Arthrex decision, which held that the PTAB judges were improperly appointed under the Appointments Clause of the U.S. Constitution. The Arthrex decision from October 2019 is proving to be quite controversial, and the USPTO is seeking an opportunity to have the doctrine reversed by the U.S. Supreme Court.…
Continue Reading U.S. Government in Search of Arthrex Reversal
Samsung Electronics Co., Ltd. v. NuCurrent, Inc., IPR2019-00860 (February 7, 2020) (Paper No. 15).
Samsung filed two IPR petitions against NuCurrent’s U.S. Patent No. 8,680,960, which related to a multi-layer-multi-turn structure for high efficiency inductors. The first petition was IPR2019-00858 based upon the Lee reference, and the second petition was IPR2019-00860 based upon the Partovi reference. Both petitions challenged the same claims of the ‘960 patent. The ‘858 IPR was instituted, but the ‘860 IPR was not instituted due to redundancy.…
Continue Reading A Rare Rehearing by the PTAB
