Category: USPTO

Recent Federal Circuit Decision Illustrates Challenges in Proving Obviousness

Recent Federal Circuit Decision Illustrates Challenges in Proving Obviousness

This non-precedential decision is of interest not for any new exposition of patent law but merely as a convenient marker to demonstrate how far the pendulum has swung away from the recent loose standards allowing disparate references to be combined to support an obvious rejection of a patent claim. In the district court below, a bench trial on a Hatch-Waxman infringement suit brought against defendants Dr. Reddy’s and Teva by Genzyme and Sanofi resulted in a decision for the plaintiffs. The court held that the defendants had failed to prove that the sole claim in issue (claim 19) was invalid for obviousness and as infringement was not disputed the verdict of infringement was entered. The technology in the case related to a method for mobilizing and harvesting stem cells in a subject by first treating the subject with G-CSF and then with plerixafor thereby increasing the number of stem cells available for harvesting from the blood for use in treating leukemia by transplantation. The defendants had relied on a combination of references to effectuate an obviousness defense. In a first combination, a paper by Hendrix et al. was cited to show that plerixafor produced increased white blood cells (WBCs) in...

Constitutionality of IPRs and PGPs

Constitutionality of IPRs and PGPs

Recently, the Supreme Court granted certiorari in Oil States Energy Services v. Green’s Energy Group, Case 16-712 that may have implications on the constitutionality of America Invents Act (AIA) patent review proceedings such as Inter Partes Review (IPRs) and Post Grant Proceedings (PGPs). The case being reviewed involved a fracking patent granted to Oil States. Green’s Energy petitioned to have the Oil States patent reviewed in an IPR (6,179,053). The IPR resulted in the Oil States patent claims being held unpatentable. But, upon review at the Federal Circuit, Oil States challenged the decision and added that IPRs were not allowed under Article III and the Seventh Amendment of the Constitution. In particular, the Oil States argument advanced that the patents must be tried before a jury because invalidity of patent claims traditionally have been a jury issue before a court of competent jurisdiction. The Oil States argument then indicated that Congress could not delegate that right to an administrative agency. The Federal Circuit affirmed the USPTO’s IPR decision of invalidity, without the issuance of an opinion. Following that decision, Oil States petitioned for certiorari to the Supreme Court regarding three issues. The one issue was whether IPR was in violation...

The Regulatory Accountability Act of 2017 May Require a Revisit of Recent Precedent

The Regulatory Accountability Act of 2017 May Require a Revisit of Recent Precedent

The Regulatory Accountability Act of 2017 is currently pending before the Senate Committee on Homeland Security and Governmental Affairs, which was recently passed by the House of Representatives with a 238-183 vote. If enacted, this bill would repeal the Chevron deference standard (“Chevron standard”), among other reforms, which potentially will require the courts to reconsider and overturn past precedent regarding the patent statute. The Chevron standard frequently appears in litigations involving federal agencies. This standard is rooted in the U.S. Supreme Court case, Chevron U.S.A. Inc. v. Nat. Res. Def. Council, 467 U.S. 837, 104 S. Ct. 2778 (1984), where the Court held that it should defer to agency interpretations of a statute that is “silent or ambiguous with respect to the specific issue.” Under this bill, courts instead would have to review relevant questions of law in these cases de novo. This bill would affect agency guidance from all federal agencies including the U.S. Food and Drug Administration, Environmental Protection Agency, and the agency most relevant to patent practitioners, the United States Patent and Trademark Office (“USPTO”). Although it is difficult to determine the reach of the implications from this bill, if enacted, it is possible that patent practitioners...

Chief Justice Roberts Recuses Himself From Life Tech Case 0

Chief Justice Roberts Recuses Himself From Life Tech Case

An interesting event has occurred at the Supreme Court in the Life Technologies Corp (Life Tech) v. Promega Corp. (Promega) case (136 S.Ct. 2505 (2016)). Chief Justice Roberts recused himself from the deliberations of the case on January 4, 2017. In order to understand why the events played out the way they did, a brief synopsis of the case is being provided.

Alabama District Court Orders TTAB to Vacate Precedential Decision 0

Alabama District Court Orders TTAB to Vacate Precedential Decision

Last year’s Supreme Court’s decision in B&B Hardware raised the stakes in opposition proceedings when it stated that TTAB rulings may have preclusive effects in subsequent federal district court litigation. As litigants and practitioners are still assessing the consequences of that landmark decision, an unexpected confrontation took place between the Board and the Federal District.

PTAB “Broadest Reasonable Construction” for Connector Patents Deemed Unreasonable by CAFC 0

PTAB “Broadest Reasonable Construction” for Connector Patents Deemed Unreasonable by CAFC

In two related opinions (Docket Nos. 2015–1361, 2015–1369, 2015–1366, 2015–1368 and Docket No. 2015-1364) issued February 22, 2016 (each captioned PPC Broadband, Inc. v. Corning Optical Communications RF, LLC), the U.S. Court of Appeals for the Federal Circuit (“CAFC”) vacated and remanded portions of decisions rendered by the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent & Trademark Office (“USPTO”) in five separate inter partes review proceedings initiated by Corning Optical Communications RF, LLC (“Corning”) against PPC Broadband, Inc. (“PPC”). PPC is the owner of three patents at issue in the inter partes review proceedings (US 8,287,320, US 8,323,060, and US 8,313,353). The patents are related and directed to features of a coaxial cable connector. The CAFC decisions focus primarily on claim construction issues relating to the application of the PTAB’s “broadest reasonable construction” (“BRC”) claim construction standard and illustrate how the Court may evaluate the reasonableness of claim constructions in PTAB decisions on appeal.

Federal Circuit to PTAB: Explain Yourself 0

Federal Circuit to PTAB: Explain Yourself

On January 22, 2016, the Federal Circuit vacated and remanded a decision by the United States Patent and Trademark Office, Patent Trial and Appeal Board (the “Board”) in an America Invents Act review, after ruling that the PTAB did not adequately describe its reasons for finding a Cutsforth Inc. brush holder patent invalid.

Supreme Court to Review First AIA Trials Case 0

Supreme Court to Review First AIA Trials Case

Last month, the U.S. Supreme Court granted certiorari in Cuzzo Speed Techs., LLC v. Lee, in which it will review the first Inter Partes Review (IPR) decision from the Patent Trial and Appeal Board (PTAB) created under the America Invents Act. Last month, the U.S. Supreme Court granted certiorari in Cuzzo Speed Techs., LLC v. Lee, in which it will review the first Inter Partes Review (IPR) decision from the Patent Trial and Appeal Board (PTAB) created under the America Invents Act. The Court will specifically review: Whether the Federal Circuit erred in holding that, in an IPR proceeding, the PTAB may construe claims in an issued patent according to their “broadest reasonable interpretation” (“BRI”) rather than their “plain and ordinary meaning;” and Even if the Board exceeded its statutory authority in instituting an IPR proceeding, whether the Federal Circuit erred in holding that the PTAB’s decision to institute an IPR proceeding is judicially non-reviewable.

USPTO Proposes a Pilot Program to Allow a Single APJ to Institute an Inter Partes Review 0

USPTO Proposes a Pilot Program to Allow a Single APJ to Institute an Inter Partes Review

The United States Patent and Trademark Office (“USPTO”) has published a request for comments in the Federal Register for a proposed pilot program which would allow for a single Administrative Patent Judge (APJ) to determine whether to institute an inter partes review (IPR), with two additional APJs being assigned to the IPR if a trial were instituted.

Federal Circuit Panel Concludes That It Lacks Jurisdiction to Review PTAB Decision Terminating IPR Proceeding 0

Federal Circuit Panel Concludes That It Lacks Jurisdiction to Review PTAB Decision Terminating IPR Proceeding

Recently, the Federal Circuit held that it lacks jurisdiction to review non-final Patent Trial and Appeal Board (“PTAB”) decisions, such as decisions to vacate or terminate a post-grant proceeding. In GEA Process Engineering, Inc. v. Steuben Foods, Inc., the Federal Circuit denied GEA’s petition for writ of mandamus directing the PTAB to withdraw an order in which it terminated GEA’s five pending IPR proceedings on the grounds that these IPRs should have never been instituted. The PTAB reasoned that GEA failed to identify all real-parties-in-interest and, thus, the petitions were incomplete.