Koninklijke Philips N.V. v. Google LLC et al., Appeal No. 2019-1177 (Fed. Cir., January 30, 2020).

Google filed an IPR against Philips’ patent relating to a method of forming a media presentation on a client device from multiple related files. Google’s IPR petition presented two grounds of unpatentability (anticipation and obviousness) based upon the SMIL 1.0 reference supported by general knowledge in the art regarding distributed media presentations, referred to as pipelining. The general knowledge in the art was supported an expert declaration and the Hua reference, although Hua was not made part of a combination with SMIL 1.0 by Google. Continue Reading The Person of Ordinary Skill in the Art Still Counts

Wasica Finance GmbH et al. v. Schrader Int’l, Inc. et al., C.A. 13-1353-LPS (D. Del. January 14, 2020) (publicly available on January 21, 2020).

Plaintiffs Wasica and Bluearc (collectively “Wasica”) filed an infringement action based on U.S. Patent No. 5,602,524 against defendants (collectively “Schrader”). The patent pertained to devices for measuring the air pressure in tires. Continue Reading IPR Estoppel Strikes Again

Biodelivery Sciences Int’l, Inc. v. Aquestive Therapeutics, Inc., Appeal Nos. 2019-1643, -1644, -1645 (Fed. Cir., January 13, 2020)

On August 29, 2019, we reported on the Biodelivery decision, where the PTAB received on remand a partially-instituted IPR decision with directions to fully institute the IPR on all petitioned grounds. Instead of fully instituting the IPR, the PTAB declined to institute the IPR at all. Petitioner appealed, and the Federal Circuit dismissed. Continue Reading IPR Institution Is Not Permanent, and Is Nonappealable – Part 2

On January 13, 2020, the U.S. Supreme Court denied certiorari in the following cases:

HP Inc. v. Berkheimer (18-415) (method of archiving in a computer);

Hikma Pharmaceuticals, et al. v. Vanda Pharmaceuticals (18-817) (method of treating a patient with schizophrenia); and

Athena Diagnostics, Inc. et al. v. Mayo Collaborative, et al. (19-430) (method of diagnosing neurotransmission or developmental disorders).

 

Fox Factory, Inc. v. SRAM, LLC, Appeal Nos. 2018-2024, -2025 (Fed. Cir. December 18, 2019)

SRAM owned two patents pertaining to bicycle chainrings, which are toothed disks that engage bicycle chains. Fox filed inter partes reviews (IPR) against the patents. The Patent Trial and Appeal Board (PTAB) determined that Fox had shown that the SRAM claims were prima facie obvious over the prior art, but secondary consideration existed that allowed SRAM to overcome the obviousness attack. The secondary considerations asserted by SRAM in defense of the patents were commercial success of a product, licensing, copying, praise by others and long-felt but unmet need.

Continue Reading The PTAB’s Erroneous Presumption

Laura Peter, Deputy Director, Patent and Trademark Office v. NantKwest, Inc., No. 18-801 (December 11, 2019)

Today, the Supreme Court overruled a recent interpretation of 35 USC §145 by the U.S. Patent and Trademark Office (USPTO), which permits the USPTO to recover expenses against applicants who filed civil actions against the USPTO. Section 145 allows unsuccessful parties at the USPTO to file a district court action for review of a decision from the Patent Trial and Appeal Board instead of going directly to the U.S. Court of Appeals for the Federal Circuit. Traditionally, the statute has been interpreted to permit the USPTO to recover expenses such as copying costs and expert fees.

Continue Reading The American Rule Is Still the Rule

Customedia Tech., LLC v. Dish Network Corp.., Appeal Nos. 2018-2239, -2240, -2310, 2019-1000, -1001, -1002, -1027 and -1029 (Fed. Cir., Nov. 1, 2019).

The day after the Federal Circuit issued its decision in Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 2018-2140 (Fed. Cir., Oct. 31, 2019), the Federal Circuit issued a pair of precedential orders in appeals of inter partes reviews and covered business method reviews.  Appellant Customedia Tech sought to avail itself of the Arthrex decision to have adverse decisions vacated on the grounds that the Patent Trial and Appeals Board was constituted in a manner that violated the Appointments Clause of the U.S. Constitution.

Continue Reading Vacatur and Remand Is Not for Everyone

Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 2018-2140 (Fed. Cir., October 31, 2019)

Since the inception of inter partes review at the Patent Trial and Appeals Board (PTAB), there have been a number of constitutional challenges to these type of proceedings.  This latest challenge concerned the very formation of the PTAB itself.

Continue Reading The PTAB and the Constitution