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Joined Parties Have Rights Too

In vacating an unpatentability decision by the Patent Trial and Appeal Board (Board), the US Court of Appeals for the Federal Circuit found that the rights of a joined party to an inter partes review (IPR) proceeding applies to the entirety of the proceedings and includes the right of appeal. Fitbit, Inc. v. Valencell, Inc., Case No. 19-1048 (Fed. Cir. July 8, 2020) (Newman, J.). Apple petitioned the Board for IPR of certain claims of a patent owned by Valencell. The Board granted the petition in part, instituting review of certain claims and denying review of other claims. After institution of the Apple IPR, Fitbit filed an IPR petition for the instituted claims and moved for joinder with Apple’s IPR. The Board granted Fitbit’s petition, granted the motion for joinder and terminated Fitbit’s separate proceeding. After the Apple/Fitbit IPR hearing, but before any Final Written Decision was issued, the Supreme Court decided SAS Institute v. Iancu (IP Update,...

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Lights Turned Out on Validity Finding

Finding that the Patent Trial and Appeal Board’s (PTAB) anticipation and obviousness decisions resulted from an erroneous interpretation of the claim language and a misunderstanding of case law, the US Court of Appeals for the Federal Circuit vacated the PTAB’s decision and remanded for further consideration. Technical Consumer Products v. Lighting Science Group Corp., Case No. 19-1361 (Fed. Cir. Apr. 8, 2020) (Stoll, J.). Life Science Group (LSG) owns a patent directed to a replacement light emitting diode (LED) light fixture. The claimed LED light fixture includes (1) a ring-shaped heat sink disposed around a heat spreader and (2) a combination of the heat sink, the heat spreader and an outer optic that has “an overall height H and an overall outside dimension D such that the ratio of H/D is equal to or less than 0.25.” Technical Consumer Products, Inc.; Nicor, Inc.; and Amax Lighting (collectively TCP) petitioned for inter partes review (IPR), arguing the...

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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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Stated Purpose More Decisive than Definition in Construing Claims

The US Court of Appeals for the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) obviousness decision, finding the decision was infected by an erroneous claim construction that failed to consider the purpose of the claimed invention. Kaken Pharmaceutical Co., LTD v. Iancu, Case No. 18-2232 (Fed. Cir. Mar. 13 2020)(Taranto, J.). Kaken owns a patent claiming a method for topically treating fungal infections in nails. Fungal infections of the nail plate and nail bed are notoriously difficult to treat because topical treatments cannot penetrate the thick keratin in the nail plate. The patent describes an effective topical treatment with an antifungal, KP-103, having good permeability, retention capacity and activity in the nail plate. The patent specification notes that topical treatments known in the prior art were largely ineffective at penetrating the nail plate and treating onychomycosis. Acrux Limited successfully sought inter partes review...

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En Banc Federal Circuit Leaves ‘Consisting Essentially Of’ High and Dry

In an 8–4 decision, the en banc US Court of Appeals for the Federal Circuit issued a per curiam order upholding its earlier panel decision finding a claim using the transitional phrase “consisting essentially of” to be indefinite because of inconsistences in the manner in which the patent specification explained the meaning of “better drying time” in connection with use of the claimed formulation. The Court denied plaintiff’s petition for panel rehearing and for rehearing en banc. HZNP Fin. Ltd. v. Actavis Labs. UT, Inc., Case No. 17-2149 (Fed. Cir. Feb. 25, 2020) (per curiam) (Lourie, J, joined by Newman, O’Malley and Stoll, JJ, dissenting). Judge Newman also dissented in the original panel decision. In his dissent, Judge Lourie explained that the panel majority misconstrued the transition “consisting essentially of” in finding the phrase “better drying time” to be indefinite since that phrase is not recited in the claim at issue. The dissent reasoned that...

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PTAB May Not Cancel Indefinite Claims in IPR, No Matter What

The US Court of Appeals for the Federal Circuit imposed limits on what the Patent Trial and Appeal Board (PTAB) is authorized to do by statute when dealing with challenged claims in an inter partes review (IPR) that it finds to be too indefinite to apply prior art. Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., Case Nos. 19-1169, -1260 (Fed. Cir. Feb. 4, 2020) (Bryson, J). Prisua Engineering owns a patent on a video-editing technique and related apparatus. Samsung Electronics America petitioned for IPR of several claims, asserting anticipation and obviousness grounds. The PTAB instituted on only one of the challenged claims, but declined to institute as to the remainder of the challenged claims, finding they were indefinite for application of prior art and therefore Samsung could not establish a reasonable likelihood of prevailing on anticipation or obviousness. Pursuant to the Supreme Court’s decision in SAS Institute (IP Update, Vol. 21, No. 5), the PTAB...

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Making the Most of Markush

The US Court of Appeals for the Federal Circuit expanded the Markush doctrine, determining that the claim language “comprising . . . [at least] . . . a group consisting of . . .” absent some basis or extrinsic evidence for limiting the group, such a group could capture an alleged infringement  having an additional component  present, as long as the additional component is “functionally similar” to the component identified in the Markush group limitation. ,Amgen Inc. v. Amneal Pharm. LLC, Case No. 18-2414 (Fed. Cir. Jan. 7, 2020) (Lourie, J). This case involves an abbreviated new drug application (ANDA) litigation over Amgen’s Sensipar®, a rapid dissolution formulation of cinacalcet hydrochloride. To overcome a US Patent and Trademark Office rejection in an office action citing prior art, Amgen filed an amendment narrowing the cinacalcet formulation limitation and later accepted the examiner’s claim amendment that modified the binder claim elements of the...

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No Splitting the Die – Federal Circuit Affirms Summary Judgment of Noninfringement

A divided panel decision of the US Court of Appeals for the Federal Circuit affirmed a summary judgment of noninfringement, finding no disputed issues of material fact to preclude summary judgement. Plastic Omnium Advanced v. Donghee America, Inc., Case No. 2018-2087 (Fed. Cir., Nov. 21, 2019) (Reyna, J) (Clevenger, J, dissenting). Plastic Omnium filed suit against Donghee for patent infringement of patents generally relating to manufacturing plastic fuel tanks formed by blow molding. A portion of this process, as claimed, requires “cutting and opening an extruded parison of closed cross section.” The primary dispute on appeal is the meaning of the claim term “parison.” In its claim construction order, the district court found the patentee had acted as its own lexicographer, defining the key disputed term “parison” as “referring to a plastic tube with a closed cross section that is shaped by—and has reached the end of—a die and is split either immediately...

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