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Assignor Estoppel Does Not Apply to AIA Challenges

The US Court of Appeals for the Federal Circuit reiterated that while assignor estoppel prevents a party that assigned a patent to another party from later challenging the validity of the assigned patent in district court, it does not preclude the party from challenging the validity of the assigned patent in an America Invents Act inter partes review (IPR) proceeding. Hologic, Inc. v. Minerva Surgical, Inc., Case Nos. 19-2054; -2081 (Fed. Cir. Apr. 22, 2020) (Stoll, J.) (Stoll, J., additional views). Csaba Truckai co-founded NovaCept and developed the NovaSure system. Hologic subsequently acquired NovaCept along with two patents it owned relating to endometrial ablation. Truckai later founded Minerva and developed a system to compete directly with Hologic’s NovaSure system, which led to Hologic suing Minerva for infringement of the two patents. Minerva challenged the patents, both in district court and by filing IPR petitions. The district court found that...

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Neither AIA Proceeding nor Government Infringement Constitute Fifth Amendment Taking

The US Court of Appeals for the Federal Circuit upheld a US Court of Federal Claims dismissal, rejecting arguments that patent infringement is a taking under the Fifth Amendment. Golden v. United States, Case No. 19-2134 (Fed. Cir. Apr. 10, 2020) (O’Malley, J.). In 2013, Larry Golden filed a complaint in Claims Court alleging patent infringement by the US government (lead case). Over the years, Golden amended his complaint in the lead case five times to add additional claims of infringement. Starting with the second amended complaint, Golden added allegations of “government taking” pursuant to 28 USC 1491(a), arguing that the government had taken his patented technology for public use without just compensation. In May 2019, the Claims Court granted in part the government’s motion to dismiss Golden’s taking claims in the lead case. Shortly before the Claims Court granted the government’s motion to dismiss in the lead case, Golden filed the present case seeking...

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Emmy Award to the Rescue – Secondary Considerations Overcome Prior Art

The Patent Trial and Appeal Board (Board), in a decision designated as precedential, found that a Patent Owner’s substitute claims were patentable in view of evidence of secondary considerations even though the prior art weighed in favor of obviousness. Lectronics, Inc. v. Zaxcom, Inc., Case No. IPR2018-01129 (PTAB Jan. 24, 2020) (Deshpande, APJ.) (designated precedential on Apr. 14, 2020). This dispute began when Lectronics filed a petition for inter partes review (IPR) on six claims for one of Zaxcom’s patents. After institution, Zaxcom filed its Patent Owner Response and a Contingent Motion to Amend, where it proposed six substitute claims in the event the board found the original patent claims invalid. The patent at issue was related to wireless recording technology. Of particular significance, Zaxcom submitted evidence that the claims at issue were incorporated into “products for which the inventors . . . received the Emmy Award, the Technical...

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With Notice and Opportunity to Respond, PTAB May Raise New Patentability Issues Based on Art of Record

In an opinion concerning the notice provisions of the Administrative Procedure Act (APA), the US Court of Appeals for the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) may identify a new patentability issue regarding proposed substitute claims based on prior art of record—but must first notify the parties and provide an opportunity to respond. Nike, Inc. v. Adidas AG, Case No. 20-1262 (Fed. Cir. Apr. 9, 2020) (Stoll, J.). The decision is part of a long-running battle between Nike and Adidas that began in 2012, when Adidas filed a petition for inter partes review (IPR) of a patent owned by Nike. Nike subsequently filed a motion to cancel the existing claims and substitute new claims. Particularly relevant is a new claim that recites a knit textile upper element of a shoe containing “apertures” that can be used to receive laces and that are “formed by omitting stitches” in the knit textile. The PTAB earlier denied Nike’s request to...

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PTAB Designates Two Opinions Precedential and One Opinion Informative, Further Clarifying the Scope of the Board’s Discretion under § 325(d) to Decline Institution

Addressing the scope of the Patent Trial and Appeal Board's ("Board") discretion under 35 U.S.C. § 325(d) to deny institution, the Board designated three opinions as precedential or informative. Precedential Opinions: In Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, Case No. IPR2019-01469 (USPTO Feb. 13, 2020) (Deshpande, APJ) (designated precedential on Mar. 24, 2020), the Board set forth a framework for evaluating whether "the same or substantially the same prior art or arguments previously were presented to the Office." The two-part test is: (1) whether the same or substantially the same (a) art or (b) arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. The Board's decision reiterated its commitment to deferring to previous Office...

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No Disclaimer, No Problem – Terms Limited by Consistent Statements

In an appeal from the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit found claim construction error and reversed the PTAB’s finding that all instituted claims were unpatentable. Personalized Media Commc’ns, LLC v. Apple Inc., Case No. 18-1936 (Fed. Cir. Mar. 13, 2020) (Stoll, J.). The dispute began when Apple filed a petition for inter partes review (IPR) challenging certain claims of a patent owned by Personalized Media Communications (PMC). The construction of the phrase “an encrypted digital information transmission including encrypted information” was of particular import in the ensuing IPR proceeding. Under the broadest reasonable interpretation standard, PMC argued that the phrase was limited to digital transmissions, whereas Apple argued that the phrase “may also include transmissions with information that is not encrypted or digital.” The PTAB adopted Apple’s construction and found the claims invalid. PMC...

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Patent-Eligible Improvements to Computer Functionality Must Be Directed to an Improvement of the Computer or Network Platform

Applying the US Supreme Court’s Alice v. CLS framework, the US Court of Appeals for the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) finding patent claims directed to data management and processing systems for merely storing advertising data were not patent eligible under 35 U.S.C. §101. Customedia Techs., LLC v. Dish Network Corp., Case No.18-2239 (Fed. Cir. Mar. 6, 2020) (Moore, J.) Dish Network filed petitions for Covered Business Method review (CBM review) of claims of two Customedia patents directed to data management and processing systems for merely storing advertising data. The patents, which share a specification, describe a remote Account-Transaction Server (ATS) and a local host Data Management System and Audio/Video Processor Recorder-player (VPR/DMS) such as a cable set-top box to which that broadcasters and content providers transmit advertising data. The advertising data can be selectively recorded in programmable storage...

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Federal Circuit Confirms Time Bar Under § 315(b) Is Waivable

Notwithstanding the jurisdictional nature of the time bar under § 315(b), the US Court of Appeals for the Federal Circuit determined that a party may waive a time bar argument if it failed to raise the issue with the Patent Trial and Appeal Board (PTAB) during the inter partes review (IPR) proceeding. Acoustic Tech. Inc. v. Itron Networked Solutions, Inc., Case No. 19-1061 (Fed. Cir. Feb. 13, 2020) (Reyna, J.). Acoustic sued Silver Spring Networks for patent infringement. Less than a year after it was served with a complaint, Silver Spring filed an IPR petition challenging the asserted patent at the PTAB. Weeks before it filed the IPR petition, Silver Spring entered into negotiations with Itron Networked Solutions regarding a potential merger. It was undisputed that Itron was time barred under § 315(b) because several years earlier, Acoustic had served Itron with a complaint alleging infringement of the same patent. As part of the parties' merger...

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Petitioner’s Reply Argument in IPR Is Not an Impermissible New Theory

Addressing whether the Patent Trial and Appeal Board (PTAB or Board) too narrowly read its rules limiting reply briefs in an inter partes review (IPR) to preclude a petitioner’s argument as a “new theory of unpatentability,” the US Court of Appeals for the Federal Circuit concluded that the Board abused its discretion by not considering petitioner’s arguments. Apple Inc. v. Andrea Electronics Corp., Case Nos. 18-2382, -2383 (Fed. Cir. Feb. 7, 2020) (Plager, J.). Andrea Electronics owns two patents relating to digital audio processing technology. At Apple’s request, the Board instituted IPR proceedings on both patents. In its initial petition, Apple argued that an algorithm identified in a certain prior art reference disclosed limitations relating to signal power. To that end, Apple’s expert submitted a declaration asserting that, based on the use of certain technical assumptions and variables, an ordinarily skilled artisan applying the algorithm would have...

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IPR Institution Limited By the Petition, But Not Limited as to the Express Teachings of the Prior Art

In an appeal from the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit held that although the PTAB erred by instituting review based on a ground not advanced in the petition, the PTAB correctly found the patent at issue was invalid and affirmed the final written decision. Koninklijke Philips N.V. v. Google LLC, Case No. 19-1177 (Fed. Cir., Jan. 30, 2020) (Prost, C.J.). This dispute began when petitioner Google filed a petition for inter partes review (IPR) for one of Philips’s patents. In its petition, Google asserted two grounds of invalidity: (i) almost all claims were anticipated by a reference referred to as SMIL 1.0; and (ii) all claims are obvious in view of SMIL 1.0 and the general knowledge of a person of ordinary skill in the art. To support its arguments that the claims were obvious in view of the general knowledge of a person of ordinary skill in the art, Google cited an expert declaration and a reference...

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