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Navigating the Interplay Between the ITC, PTAB and District Courts

Recent changes in intellectual property law in the US International Trade Commission (ITC), the Patent Trial and Appeal Board (PTAB) and federal US District Courts have had major impacts on litigation strategy and business operations. Within these venues, key changes often run parallel to each other, and understanding and maximizing the interplay between them is critical to formulizing an IP strategy. A panel of McDermott attorneys, including Charlie McMahon, Amol Parikh, Jay Reiziss and Jiaxiao Zhang, recently hosted a webinar exploring these issues in collaboration with IAM and Lexology. Click here to watch their discussion of the complexities of these related developments as well as innovative and practical insights to help you navigate them.

KEY TAKEAWAYS

  • The rate at which the PTAB institutes petitions for Inter Partes Review (IPR) has been steadily declining, with a newer low expected this year. The falling institution rate over the last several years is attributable in part to discretionary denial under § 314(a).
  • Until 2020, there was still uncertainty behind the contours of how the PTAB’s discretionary denial would be applied when there was a co-pending district court or ITC proceeding. Last year, the PTAB designated as precedential its decision in Apple v. Fintiv, setting forth factors intended to guide the discretionary decision to institute when there are parallel proceedings.
  • Post-Fintiv, it looks less likely that litigants will be able to simultaneously pursue district court litigation and a PTAB proceeding. One of the benefits of the PTAB is the lower burden of proof to demonstrate that a patent is unpatentable. Removing this tool from the litigation toolbox could have a profound impact on defensive strategy.
  • It is still unclear how the PTAB’s Finitiv decision will apply to ITC investigations. Fitness technology companies, among others, have since asked the PTAB’s Precedential Opinion Panel (POP) to determine whether Fintiv should apply to parallel ITC investigations.
  • There have also been additional developments at the ITC related to the use of licensing to satisfy the domestic industry requirement. The pending Advancing America’s Interests Act (AAIA) would significantly change how complainants can rely upon licensing activities to establish a domestic industry.

 




Set Phase to Subject Matter Ineligible: More Accurate Haplotype Phase Method Still Abstract

In an appeal from a final rejection of a pending application, the US Court of Appeals for the Federal Circuit held that claims directed to methods for determining “haplotype phase” were correctly rejected as subject matter ineligible. In Re: Board of Trustees of The Leland Stanford Junior University, Case No. 20-1288 (Fed. Cir. Mar. 11, 2021) (Reyna, J.)

This case was consolidated for the purposes of oral argument with In Re: The Board of Trustees of the Leland Stanford Junior University, Case No. 20-1012 (Stanford Part I). Both cases relate to methods of determining “haplotype phase” (a scientific way of describing the methodology for determining from which parent a particular allele (or gene) is inherited).

Stanford Part I related to a claimed method that utilized “linkage disequilibrium data” and “transition probability data” to increase the number of haplotype predictions made. In Stanford Part I, the Federal Circuit held that this claimed method for increasing the number of haplotype predictions made did nothing more than recite a haplotype phase algorithm and instruct users to “apply it,” similar to the claimed subject matter prohibited by Alice.

The claims at issue in this appeal were directed toward a method of improving the accuracy and efficiency of haplotype predictions, which involves “building a data structure describing a Hidden Markov Model,” and then “repeatedly randomly modifying at least one of the imputed initial haplotype phases” to automatically recompute the parameters of the Hidden Markov Model until the parameters indicate that the most likely haplotype phase is found. In addition to these mathematical steps, the claims recited the steps of receiving genotype data, imputing an initial haplotype phase, extracting the final predicted haplotype phase from the data structure and storing it in computer memory.

The examiner and then the Patent Trial & Appeal Board found that this claimed improved process was directed toward patent-eligible subject matter—a mathematical algorithm. Stanford appealed.

Applying the two-step Alice framework, the Federal Circuit first determined whether the claims were directed to an abstract mathematical calculation and thus directed to patent-ineligible subject matter under 35 USC § 101.

Stanford argued that the claimed process was not directed to a patent-ineligible abstract idea, but instead represented an improvement on a technological process—namely, an improvement in the efficiency of haplotype phase predictions that this mathematical algorithm could yield. The Federal Circuit found that Stanford had forfeited this argument by failing to raise it before the Board.

Stanford separately argued that another claimed advantage was that the claim steps resulted in more accurate haplotype predictions, rendering the claimed invention a practical application rather than an abstract idea. The Federal Circuit disagreed, explaining that the improvement in computational accuracy alleged here did not qualify as an improvement to a technological process, but rather was an enhancement to the abstract mathematical calculation of haplotype phase itself.

Next, under step two of the Alice inquiry, the Federal Circuit found that the claims did not include additional limitations that, when taken as a whole, provided an [...]

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The Road Less Traveled: IPR Denial Decisions Appealable via Mandamus

The US Court of Appeals for the Federal Circuit concluded that while it did not have jurisdiction to consider the direct appeal of a Patent Trial & Appeal Board decision denying institution, it could review the decision under its mandamus jurisdiction. Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V., Case No. 20-1071 (Fed. Cir. Mar. 12, 2021) (Moore, J.)

In 2019, Janssen sued Mylan in district court for infringement of one patent. Less than six months later, Mylan petitioned the Board for inter partes review (IPR) of that patent. Opposing institution, Janssen argued that the IPR would be an inefficient use of Board resources because of two co-pending district court actions (one involving Mylan and one involving a third party) that implicated the same validity issues as the IPR petition. Janssen also argued that those district court actions would likely reach final judgment before any IPR final decision. The Board agreed with Janssen. Mylan appealed and also requested mandamus relief.

On appeal, Mylan argued that the Board’s determination to deny institution based on the timing of a separate district court action that did not involve Mylan undermined constitutional and due process rights.

Before addressing the merits of the appeal, the Federal Circuit addressed two jurisdictional questions: whether it had jurisdiction over Mylan’s direct appeal and whether it had jurisdiction over the mandamus request. As to the first question, the Court relied on its decision in St Jude Medical v. Volcano, finding that decisions denying institution are not subject to review on direct appeal. As to the second question, the Court concluded that judicial review was available in extraordinary circumstances, and particularly in situations involving denial of petitions. The Court stated that “[t]o protect our future jurisdiction, we have jurisdiction to review any petition for a writ of mandamus denying institution of an IPR.”

Having found that it had jurisdiction, the Federal Circuit turned to the merits. The Court explained that when a mandamus petition challenges a decision denying institution, it will be especially difficult to satisfy the requirements for mandamus because the relevant statute bestows the Board with significant discretion. The Court concluded that there is no reviewability of a Board denial of institution except for colorable constitutional claims. The Court found that Mylan lacked a clear and indisputable right to relief and also failed to state a colorable claim for constitutional relief since it did not identify a deprivation of “life, liberty or property” necessary to a procedural due process claim. The Court also found that there were no substantive due process claims since there is no fundamental right to have the Board consider whether to institute on an IPR petition based only upon co-pending litigation to which petitioner is a party. The Court thus denied Mylan’s petition.




No Estoppel in the Name of Different Interests and Claims

The US Court of Appeals for the Federal Circuit found that 35 USC § 314(d) did not bar its review of a Patent Trial & Appeal Board determination that a petitioner was not estopped from maintaining inter partes review (IPR) proceedings since the alleged estoppel-triggering event occurred post-institution. Uniloc 2017 LLC v. Facebook Inc., Case Nos. 19-1688, -1689 (Fed. Cir. Mar. 9, 2021) (Chen, J.)

Facebook and WhatsApp (collectively, Facebook) filed two IPR proceedings challenging certain claims of Uniloc’s patents. Apple also filed a petition challenging a subset of claims of the patent. Facebook subsequently filed a third petition that was substantively identical to Apple’s petition and also filed a motion to join Apple’s IPR. LG Electronics filed petitions identical to Facebook’s three petitions and also filed motions to join Facebook’s IPRs. The Board instituted Facebook’s third petition and granted Facebook’s motion to join Apple’s IPR. The Board then instituted Facebook’s original IPRs and ordered the parties to “brief the applicability, if any, of 35 U.S.C. § 315(e)(1)” against Facebook, in light of the soon-to-be-issued final written decision for Apple’s IPR. At the time, LG’s petition and motion to join Facebook’s IPRs had not been decided.

In response to the Board’s order, Facebook argued that it should not be estopped under § 315 from challenging the patentability of any claim upon the issuance of a final written decision in Apple’s IPR. Facebook argued that if the Board did find it estopped, Facebook should be able to continue as a petitioner against one of the claims, which it never challenged, in Apple’s IPR. Facebook also argued that if LG’s IPR petition was granted and LG was joined as a party to its first IPR, the IPR should proceed as to all challenged claims (regardless of whether Facebook was found estopped) because LG was not a party in Apple’s IPR. Uniloc responded, arguing that once the Board issued a final written decision in Apple’s IPR, Facebook would be estopped as to all claims challenged in its first IPR and the Board must terminate that proceeding. Uniloc also argued that allowing LG to join the IPR would create inefficiency and confusion.

The Board ultimately instituted LG’s IPR petitions and granted LG’s motion to join Facebook’s IPRs. In its Patent Owner Responses to the original Facebook IPR petitions, Uniloc argued that LG should be barred from maintaining the first Facebook IPR once the Board issued a final written decision in the Apple IPR because LG was estopped as a real party in interest (RPI) or privy to Facebook. A few months later, the Board issued a final written decision in the Apple IPR upholding the patentability of all challenged claims. The Board’s decision in the first Facebook IPR found that Facebook was estopped under § 315(e)(1) as to claims also challenged in Apple’s IPR, but not other claims since § 315(e)(1)’s estoppel provisions apply only to grounds that the petitioner raised or reasonably could have raised “with respect to that claim.”

In its final [...]

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Old Dawg, New Tricks: Bankruptcy Successor Is Also Inter Partes Re-Exam Successor

Reversing the Patent Trial and Appeal Board, the US Court of Appeals for the Federal Circuit concluded that because a plaintiff was a successor in bankruptcy, it was a successor in an inter partes re-examination. The Court held that the plaintiff should be substituted for the original requestor following the sale of the original re-examination requestor’s right, title and interest in, to and under its assets to a holding company, which further assigned such assets and interests to the plaintiff. Mojave Desert Holdings, LLC v. Crocs, Inc., Case No. 20-1167 (Fed. Cir. Feb. 11, 2021) (Dyk, J.)

The dispute originated in 2012 when Crocs sued Dawgs for patent infringement. Dawgs responded by filing a third-party request for inter partes re-examination, which the US Patent & Trademark Office granted. The examiner rejected Crocs’ challenged patent claim as anticipated, and Crocs appealed to the Board.

While the appeal was pending, Dawgs filed a petition under chapter 11 of the Bankruptcy Code. Dawgs moved the bankruptcy court to approve the sale of all of its assets to a recently formed entity, Dawgs Holdings, free and clear of all liens, claims and encumbrances pursuant to Bankruptcy Code. The relevant provision of the Asset Purchase Agreement assigned Dawgs Holdings:

[a]ll of [Dawgs’] right, title and interest in, to and under all of the assets, properties and rights of every kind and nature, whether real, personal or mixed, tangible or intangible (including intellectual property and goodwill) . . . .

The sale order carved out from the free and clear language “any Claims [Crocs] . . . may hold for patent infringement occurring post-Closing.” Shortly after the closing, Dawgs Holdings assigned all rights, including explicitly the claims asserted by Dawgs in the district court action and the inter partes re-examination, to Mojave.

Months later, Mojave moved the Board to change the real party-in-interest from Dawgs to Mojave. The Board dismissed and expunged the request because:

  • The sale from Dawgs to Dawgs Holdings was silent with respect to the inter partes re-examination.
  • Mojave was not a party to the inter partes re-examination proceeding.
  • Mojave did not have standing to update the real party-in-interest.
  • Mojave did not file its submission within 20 days of any change of the real party-in-interest as required by 37 CFR § 41.8(a).

Subsequently, the Board reversed the examiner’s rejection of Crocs’ patent claim, which decision Dawgs appealed to the Federal Circuit, while simultaneously filing a motion to substitute Mojave.

In granting the substitution motion, the Federal Circuit noted the broad language describing the sale of all of Dawgs’ assets to Dawgs Holdings. The Court distinguished the sale language from the sale language in other cases where a buyer in bankruptcy may only acquire “substantially all” of the assets of another entity. Because the language describing the transfer from Dawgs to Dawgs Holdings was so broad, the Federal Circuit concluded that the transfer from Dawgs Holdings to Mojave included the interests in Dawgs’ claims and its successor-in-interest requestor status in the inter [...]

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Attempts to Appeal Institution Decision Is SIPCOed

Reinforcing the impact of the Supreme Court of the United States’ 2019 decision in Thryv v. Click-to-Call, the US Court of Appeals for the Federal Circuit reiterated that the Patent Trial and Appeal Board’s threshold determination as to whether it will institute a proceeding under the America Invents Act (AIA), in this instance a Covered Business Method (CBM) review, is not appealable because it is closely tied to the institution decision. cxLoyalty, Inc. v. Maritz Holdings Inc., Case Nos. 20-1307, -1309 (Fed. Cir. Feb. 8, 2021) (Prost, C.J.)

cxLoyalty petitioned for CBM review of a patent owned by Maritz. The patent relates to a system and method for permitting a loyalty program customer to redeem loyalty points for rewards offered by vendors without human intervention. A participant (i.e., a customer) uses a graphical user interface (GUI) to communicate with a web-based vendor system (e.g., an airline reservation system). An application programming interface (API) facilitates information transfer between the GUI and the vendor system.

The Board instituted CBM review and concluded that the original claims in the patent were ineligible for patenting under 35 USC § 101, but that the proposed substitute claims were patent eligible. The Board found the original and substitute claims amounted “to a fundamental economic practice long prevalent in commerce” and therefore were directed to abstract ideas. However, the Board found that, unlike the original claims, the substitute claims contained an inventive concept. cxLoyalty appealed the Board’s ruling as to the substitute claims. Maritz cross-appealed the Board’s determination that the patent was eligible for CBM review and the Board’s ruling as to the original claims.

The Federal Circuit quickly disposed of Maritz’s challenge to the CBM-eligibility of the patent, citing to its 2020 SIPCO v. Emerson decision. In SIPCO, the Court held that Thryv made clear that the Board’s threshold determination as to whether a patent qualifies for CBM review is a non-appealable decision. Whether CBM review is an available mechanism is conditioned on whether the patent qualifies, since patents that are directed to “technological inventions” are excluded from CBM review. Because the determination of whether a patent qualifies for CBM review is inextricably tied to the decision to institute, it is not appealable. SIPCO was decided after briefing but before oral argument of this case. Indeed, Maritz’s counsel acknowledged during oral argument that SIPCO foreclosed Maritz’s CBM eligibility challenge.

As to the merits, the Federal Circuit agreed with the Board that both the original and substitute claims were directed to patent-ineligible subject matter under § 101. Maritz argued that the claim features of permitting a participant to redeem points for rewards “without knowing that the actual transaction is a currency transaction at less than the perceived price” saved the claims from being merely abstract ideas. The Court disagreed. After applying the Alice/Mayo two-step analysis, the Court found that 1) the claims were directed to abstract ideas, and 2) the claims merely recited generic and conventional computer components or functionality for carrying out the abstract [...]

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If You Seek or Browse and Can Find, It’s Publicly Available, but Anticipation Isn’t Obvious and Requires Notice

The US Court of Appeals for the Federal Circuit found that facilitating browsing of documents on a website was sufficient to support public accessibility of prior art references, but that the Patent Trial and Appeal Board cannot sua sponte invalidate a claim as anticipated under § 102 unless that specific statutory ground had previously been noticed. M & K Holdings, Inc. v. Samsung Electronics Co., Ltd., Case No. 20-1160 (Fed. Cir. Feb. 1, 2021) (Bryson, J.)

In response to M & K Holdings’ suit for patent infringement, Samsung filed an inter partes review (IPR) petition seeking cancellation of all claims of the asserted patent as obvious. The patent is directed to an efficient method for compressing video files by “decoding a moving picture in inter prediction mode,” using a motion vector to quantify where “reference pictures are used to estimate motion of a current block” over the video duration. Samsung’s petition relied on references generated in connection with the Joint Collaborative Team on Video Coding (JCT-VC), which established industry standards for high-efficiency video coding (HEVC). All three prior art references were uploaded to JCT-VC’s website before the critical date.

After the Board held all claims of the patent unpatentable, M & K appealed, arguing that the Board erred by relying on references that do not qualify as prior art printed publications under 35 USC § 102, and by finding claim 3 anticipated when the petition for IPR asserted only obviousness as to that claim.

Public Accessibility and Printed Publications

M & K argued that a person of ordinary skill could not have located two of the three prior art references by exercising reasonable diligence, and therefore the Board’s holding that those references were publicly accessible was erroneous. Specifically, M & K argued that the structure and search capabilities of the JCT-VC website (requiring navigating to the JCT-VC landing page, clicking on the “All meetings” link and selecting a particular meeting in order to access documents, without any explanation that the “All meetings” label contains a document repository, and with no search functionality on the landing page or the “All meetings” page) meant that even if a user happened to navigate to a meeting page of the website, the user could not search documents by content, but could search only by date, title and number.

The Federal Circuit disagreed, explaining that public accessibility does not require a website’s landing page to have search functionality. Instead, “given the prominence of JCT-VC, the dispositive question is whether interested users of the JCT-VC website could have located [the references] through reasonable diligence.” The Court agreed that substantial evidence supported that interested users could have done so.

Regardless of whether the website described itself as a document repository, the Federal Circuit noted that a skilled artisan browsing the JCT-VC website would understand that it was structured to serve the JCT-VC’s purpose of developing HEVC standards through member meetings and communications. Therefore, a skilled artisan browsing the JCT-VC website would have realized that documents are hosted [...]

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PTAB Designates Three Opinions as Precedential

In RPX Corp. v. Applications in Internet Time, LLC, Case Nos. IPR2015-01750, -01751, -01752 (Oct. 2, 2020) (Boalick, CAPJ) (designated precedential on Dec. 4, 2020), the Patent Trial and Appeal Board (Board) terminated institution of RPX’s petitions for inter partes review (IPR) because Salesforce—served with a complaint more than one year before—should have been named as a real party-in-interest (RPI) to the proceedings. As a result, RPX’s petition was time-barred under § 315(b).

The Board’s determination came after remand from the Federal Circuit, which vacated the Board’s prior finding that Salesforce was not an RPI. (IP Update, Vol. 21, No. 8). The Federal Circuit instructed the Board to use the common law understanding of “real party-in-interest” and a “flexible approach that takes into account both equitable and practical considerations, with an eye toward determining whether the non-party is a clear beneficiary that has a pre-existing, established relationship with the petitioner.” On remand, the Board took additional discovery to examine the relationship between RPX and Salesforce, including RPX’s business model, Salesforce’s relationship with RPX, whether RPX represents Salesforce’s interests in invalidating the patents, and the significance of the fact that Salesforce and RPX had overlapping Board members. After considering the relationship, the Board found the evidence pointed clearly toward a common interest—between RPX and its members—in invalidating the patents in IPR proceedings. It found RPX could not avoid the time bar under § 315(b), or estoppel under § 315(e) for its members, by creating the appearance that RPX acts independently of its members’ interests when filing IPR petitions.

In SharkNinja Operating LLC v. iRobot Corp., Case No. IPR2020-00734 (Oct. 6, 2020) (Melvin, APJ) (designated precedential on Dec. 4, 2020), the Board declined to address—for purposes of institution—the patent owner’s claim that the IPR petition failed to name an alleged RPI under § 312(a)(2)’s requirement that a petition “identif[y] all real parties-in-interest.” iRobot alleged that JS Global was an unnamed RPI because it was intertwined with SharkNinja’s business and was in a position to fund and exercise control over the IPR petition. The Board declined to reach a determination on the issue because it would have no impact on the proceeding, absent evidence that (1) JS Global was a time-barred or an otherwise estopped entity whose addition to the petition would result in its dismissal under § 315 or (2) SharkNinja’s omission of JS Global was done in bad faith. Even if SharkNinja was mistaken in its decision not to name JS Global as an RPI, the Board’s precedent would allow SharkNinja to correct the mistake during the proceeding.

In Apple Inc. v. Uniloc 2017 LLC, Case No. IPR2020-00854 (Oct. 28, 2020) (Quinn, APJ) (designated precedential on Dec. 4, 2020), the Board exercised its discretion to deny Apple’s motion for joinder because it would have resulted in a “serial attack” on Uniloc’s patent. Apple had previously filed an IPR petition on the same patent, alleging various grounds of invalidity. The Board denied institution because it failed to show a reasonable likelihood [...]

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Reprints Do Not Change Earlier Publication Date

Addressing the entirety of the evidence standard, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board finding that responsive evidence can be properly considered to demonstrate the public availability of a reference relied upon in an inter partes review (IPR) petition. VidStream LLC v. Twitter, Inc., Case Nos. 19-1734, -1735 (Fed. Cir. Nov. 25, 2020) (Newman, J.)

Youtoo Technologies sued Twitter for infringement of a patent directed to recording and publishing content on social media websites. In response, Twitter filed two IPR petitions challenging the asserted patent claims as obvious. The IPR petitions relied on a textbook (Bradford) as a primary reference in both petitions. Bradford was first published in 2011, but the copy provided with the petitions indicated a reprint date of 2015. The Board granted the IPR petitions and ultimately found all claims unpatentable over combinations of art including Bradford. VidStream, which emerged as the patent owner after Youtoo went through bankruptcy proceedings, appealed.

VidStream argued that the Board erred in accepting and considering evidence that Twitter provided for the first time with its replies, instead of considering only the documents that Twitter filed with its original petitions. Specifically, Twitter filed with its replies a copy of the US Copyright Office Certificate of Registration stating that Bradford’s date of first publication was November 8, 2011; a Library of Congress copy of Bradford; and a declaration by Twitter counsel that he had compared the excerpts of Bradford that were submitted with the petition with the same pages in the 2011 Library of Congress copy of Bradford and found them “identical.” VidStream stated that the Bradford pages filed with Twitter’s petitions were published December 13, 2015, and thus argued that Twitter did not show that these pages were available before the patent’s 2012 priority date. VidStream maintained that the Board erred in considering Bradford in the obviousness combinations.

The Federal Circuit noted that VidStream had challenged the proper priority date of Bradford before the Board and had also filed a motion to exclude Bradford as improper evidence. The Board denied VidStream’s motion to exclude, finding that it was appropriate to permit Twitter to respond to VidStream’s challenge by providing additional evidence to establish the Bradford publication date. In line with its 2018 Nobel Biocare Servs. AG v. Instraden USA Inc. and Anacor Pharm. decisions, the Court found that the responsive evidence supported the Board’s finding that Bradford was published and publicly accessible before the patent’s priority date. Like the Board, the Court considered the entirety of the evidence relevant to a determination of printed publication. For example, the ISBNs of the 2011 and the 2015 printings of Bradford were the same, and a Machine-Readable Cataloging record had been created for Bradford in August 2011. Bradford was also printed by an established publisher, and the internet archive included an Amazon webpage for Bradford, further confirming that Bradford was publicly accessible in 2011 and that interested persons could access and order the book in [...]

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Analogous Art Includes Reference a Skilled Artisan Would Reasonably Consult

Addressing the standard for determining whether a prior art reference constitutes analogous art for purposes of an obviousness analysis, the US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial and Appeal Board decision that a reference was not analogous. The Court explained that the Board did not consider the purpose and problems to which the prior art and challenged patent relate. Donner Tech., LLC v. Pro Stage Gear, LLC, Case No. 20-1104 (Fed. Cir. Nov. 9, 2020) (Prost, C.J.)

Pro Stage owns a patent directed to an improved guitar effects pedalboard. Guitar effects pedals are electronic devices that affect the amplified sound of a guitar. The pedals are controlled by foot operation switches in order to leave the user’s hands free to play the instrument. When multiple pedals are used, they must be interconnected by cables, which are typically daisy-chained between each separate pedal. Once interconnected, the pedals are placed on a wooden pedalboard and covered with foam so that the cables are not exposed. This leads to difficulty when swapping or adding new pedals because the foam must be removed from the board and the cables repositioned. Pro Stage’s patent attempts to remedy this issue by elevating one side of the pedalboard from the stage floor and providing a mounting surface and cable connection openings such that cables can pass beneath the mounting surface, as demonstrated by the patent figures shown below.

Donner petitioned for inter partes review of the patent, challenging various claims as obvious under 35 USC §103. Donner asserted three grounds of invalidity, all relying at least in part on the teachings of the Mullen patent. Mullen relates to an improved structure for supporting one or more electrical relays and for providing wiring-channel space for receiving wires connected to the relays in order to connect the relays to various control circuits. As part of its petition, Donner claimed that certain embodiments of Mullen (below), disclose a structure that is analogous to the structure claimed in the challenged patent.

The Board rejected that Donner’s obviousness challenges, finding that Donner did “not put forth any argument or evidence to explain what would have compelled a pedalboard inventor in 1999 or 2000 to consider potential solutions arising from early 1970s-era relay technologies,” notwithstanding arguments, expert and other testimony, and other evidence submitted by Donner to the contrary. Donner appealed.

The Federal Circuit reversed, explaining the relevant tests to analyze whether a prior art reference is analogous. The two separate tests are (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not [...]

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