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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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Stick to Your Guns: PTAB Should Rarely Issue New Grounds of Unpatentability

The Patent Trial and Appeal Board (PTAB) Precedential Opinion Panel (POP) issued a precedential opinion in an inter partes review (IPR) to resolve two questions: May the PTAB raise a ground of unpatentability not developed by the petitioner? If it does so, must the PTAB provide the parties notice and an opportunity to respond to the new ground of unpatentability? Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, Case No. IPR2018-00600 (USPTO July 6, 2020) (Boalick, CAPJ) (granting request for POP rehearing). The POP held that while the PTAB may raise new grounds of unpatentability, it should refrain from doing so except in rare instances. If it does raise new grounds of unpatentability, the PTAB must provide the parties notice and an opportunity to respond to the new grounds. Titan filed a petition requesting IPR of a patent owned by DynaEnergetics directed to a perforating gun assembly for wellbore tools. One of the grounds alleged anticipation by a prior...

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Prior Art-Based Invalidity Analysis May Be Possible for Indefinite Claim

Addressing a decision by the US Patent and Trademark Office’s Patent Trial and Appeal Board (Board) declining to find certain claims unpatentable because they contained means-plus-function elements without any corresponding disclosed structure, the US Court of Appeals for the Federal Circuit affirmed the Board’s decision except as to one challenged claim where the means-plus-function element was recited as an alternative to a non-means-plus-function element. Cochlear Bone Anchored Solutions AB v. Oticon Medical, AB, Case Nos. 19-1105, -1106 (Fed. Cir. May 15, 2020) (Taranto, J.). Cochlear sued Oticon for infringement of four patents related to hearing devices. In response, Oticon filed two inter partes review petitions against all claims of one of the patents. The Board initially declined to institute review as to four of the challenged claims that contain means-plus-function elements without the required corresponding structure identified in the...

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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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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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No En Banc Review of Non-Institution Decision After Remand of Partial Institution

Addressing a panel decision that affirmed a Patent Trial and Appeal Board (PTAB) holding denying institution of an inter partes review (IPR) after an earlier partial institution decision, the US Court of Appeals for the Federal Circuit denied both a panel rehearing and a rehearing en banc over a dissent from Judge Newman. BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., Case Nos. 19-1643, -1644, -1645 (Fed. Cir. January 13, 2020) (Newman, J, dissenting). In late 2014, BioDelivery filed three IPR petitions collectively asserting 17 different invalidity grounds against a single patent owned by Aquestive Therapeutics. For each petition, the PTAB partially instituted IPR proceedings based on a single invalidity ground, but ultimately upheld the patentability of all claims. BioDelivery appealed those decisions and the Federal Circuit remanded in view of the Supreme Court’s decision against partial institutions in SAS Institute v. Iancu (IP...

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PTAB Issues Updated Trial Practice Guide: Yearly Updates Expected

On November 20, 2019, the Patent Trial and Appeal Board (PTAB) issued updated guidance for trial procedures in inter partes review (IPR) and post grant review (PGR) proceedings at the US Patent and Trademark Office in the new edition of the Trial Practice Guide. For easier reading and greater consistency, the new edition incorporates the prior updates released in August 2018 (IP Update, Vol. 21, No. 9) and July 2019 (IP Update, Vol. 22, No.8) into the original August 2012 Practice Guide. The new edition provides updated guidance on the impact of SAS Institute Inc. v. Iancu on the institution of trial. The new guide also replaces the prior “observations” practice with procedures for a more fulsome sur-reply. In addition, the PTAB has provided more opportunities to contact the PTAB to request an initial conference call, and it has updated the way word counts apply to specific filings. The PTAB has also updated the expected scheduling order for derivation...

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