Nothing has dominated the U.S. Patent and Trademark Office (PTAB) world like the Arthrex decision. Since October 2019, we have posted seven times about Arthrex and its progeny decisions. Now comes more.
On October 13, the U.S. Supreme Court granted certiorari in case numbers:
19-1434 United States v. Arthrex, Inc., et al.
19-1452 Smith &…
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
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…
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
