The US Court of Appeals for the Federal Circuit found that a district court abused its discretion in granting a preliminary injunction enjoining a patent holder from making claims of patent infringement without finding that those infringement claims were made in bad faith. The Federal Circuit reversed, vacated and remanded the district court’s decision. Myco Indus., Inc. v. BlephEx, LLC, Case No. 2019-2374 (Fed. Cir. Apr. 3, 2020) (O’Malley, J.).
The Patent and Trial Appeal Board (PTAB) Precedential Opinion Panel (POP) refused to revisit an earlier PTAB panel decision, reiterating that it remains within the discretion of a PTAB panel to deny institution on a patent challenge because of a pending trial in federal district court. Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, Case No. IPR2019-01393, Paper 18 (PTAB Apr. 6, 2020) (Iancu, Dir.; Hirshfeld, Comm’r; Boalick, CAPJ, sitting as POP); Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, Case No. IPR2019-01393, Paper 19 (PTAB Apr. 7, 2020).
The Patent Trial and Appeal Board (PTAB) designated an appeal decision as precedential, holding that an examiner may apply a lower standard for establishing public availability of a prior art reference as compared to a petitioner in an inter partes review (IPR). Ex parte Grillo-López, Appeal No. 2018-006082 (USPTO Jan. 31, 2020) (Chang, APJ) (denying request for rehearing) (designated as precedential on April 7, 2020). The PTAB determined that the examiner had sufficiently established a prima facie case that a US Food and Drug Administration (FDA) transcript qualified as a printed publication, even though the PTAB had previously found that a petitioner in an IPR proceeding had failed to qualify the same FDA transcript as a printed publication. The PTAB held that during prosecution, the examiner must establish only a prima facie case, and the burden then shifts to the applicant to come forward with rebuttal evidence to overcome the prima facie case. This differs from an IPR proceeding, where the petitioner must come forward with sufficient arguments to show, at the institution stage, a reasonable likelihood of prevailing on the unpatentability of the challenged claims.
On March 27, 2020, the President signed into law the Coronavirus Aid, Relief, and Economic Security (CARES) Act, which authorized the US Copyright Office (USCO) and the United States Patent and Trademark Office (USPTO) to temporarily waive or modify certain statutory deadlines. Prior to the CARES Act, the USPTO and USCO had sought to provide relief to intellectual property owners by waiving certain fees (including, for example, fees associated with petitions to revive abandoned applications), but had been limited by their inability to modify statutory deadlines.
The extensions will undoubtedly provide needed relief for certain rights holders during this tumultuous time. Nonetheless, if possible, adhering to original deadlines is the safest route, and parties should first carefully review the USPTO and USCO notices with a lawyer to determine whether the extensions are applicable and legally prudent.
Addressing the issue of patent eligibility under §101, the US Court of Appeals for the Federal Circuit reversed a district court, explaining that the method of preparation claims at issue are not directed to a patent-ineligible natural phenomenon. Illumina, Inc. v. Ariosa Diagnostics, Inc., Case No. 19-1419 (Fed. Cir. Mar. 17, 2020) (Lourie, J.) (Reyna, J., dissenting).
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 US Court of Appeals for the Federal Circuit affirmed a district court’s decision to dismiss a first-filed declaratory judgment complaint, finding that equitable considerations warranted departure from the first-to-file rule. Communications Test Design, Inc. v. Contec, LLC, Case No. 19-1672 (Fed. Cir. Mar. 13, 2020) (O’Malley, J.).
The US Court of Appeals for the Federal Circuit affirmed a jury verdict of infringement of a design patent on grounds that purported appellate issues had not been properly presented to the trial court. Hafco Foundry and Machine Co., Inc. v. GMS Mine Repair and Maintenance, Inc., Case No. 18-1904 (Fed. Cir. Mar. 16, 2020) (per curiam) (Newman, J., concurring in part, dissenting in part).
The en banc US Court of Appeals for the Federal Circuit declined to review its October 2019 panel decision holding the appointment of administrative patent judges (APJs) at the US Patent and Trademark Office (PTO) unconstitutional because APJs are appointed as if they are “inferior officers” but vested with authority that is reserved for Senate-confirmed “principal officers” under the Constitution’s Appointments Clause. Arthrex, Inc. v. Smith & Nephew, Inc., Case No. 18-2140 (Fed. Cir. Mar. 23, 2020) (per curiam) (Moore, J., joined by O’Malley, Reyna and Chen, JJ., concurring) (Dyk, J., joined by Newman, Wallach and Hughes, JJ., dissenting).
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