04/11/15

Exela Pharama Sciences, LLC v. Lee: PTO revival rulings are not subject to third party collateral challenge

Category: Administrative Law 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleExela Pharama Sciences, LLC v. Lee, No. 2013-1206 (Fed. Cir. 26, 2015).
IssueThis appeal presents the question of whether a third party has the right to challenge, by way of the Administrative Procedure Act (APA), a ruling of the Patent and Trademark Office reviving a patent application that had become abandoned by failure to meet a filing schedule established by the Patent Cooperation Treaty and its implementing statute.
Exela Pharama Sciences, LLC, at *2.
HoldingWe affirm the dismissal, on the ground that PTO revival rulings are not subject to third party collateral challenge, thereby precluding review regardless of whether Exela’s claims were time-barred.
Id. at *3.
 
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03/21/15

President & Fellows of Harvard v. Lee: Evidence of Terminal Disclaimer Payment

Category: Administrative Law  
 
 
 
By: Christian Hannon, Contributor
 
TitlePresident & Fellows of Harvard v. Lee, No. 2013-1628 (Fed. Cir. Oct. 29, 2014) (Non-Precedential).
Issue[Is there] evidence that [Harvard] had [not actually] paid the requisite terminal disclaimer fee [for U.S. Patent No. 5,087,571 (the '571 patent)] and that, as a result, the terminal disclaimer was not legally entered into the prosecution history for the ’571 patent and was therefore invalid.
President & Fellows of Harvard, at *4.
HoldingWe conclude that the evidence as a whole provides a rational basis for the PTO’s conclusion that the terminal disclaimer fee was paid. As such, we find that the district court properly concluded that the PTO’s decision was not arbitrary or capricious.
Id. at *9.
 
 
 
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01/27/15

Japanese Found. for Cancer Research v. Lee: Federal Circuit Rules that PTO properly denied Certificate of Correction for Unauthorized Terminal Disclaimer

Category: Administrative Law  
 
 
 
 By: Roy Rabindranath, Contributor 
 
TitleJapanese Found. for Cancer Research v. Lee, No. 2013-1678, 2014-1014 (Fed. Circ. December 9, 2014).
Issue[Whether the district court was correct in ruling that] the PTO acted arbitrarily and capriciously, and abused its discretion, when it refused to withdraw the terminal disclaimer on U.S. Patent No, 6, 194,187 (“187 patent”).
Japanese Found., at *2 (Text Added).
Holding[…] we find that the PTO did not act arbitrarily, act capriciously, or abuse its discretion in declining to use any inherent authority that it might have in withdrawing the terminal disclaimer on the ‘187 patent that the Foundation’s attorney of record duly filed in accordance with the PTO’s regulations.
Id. at *17.
 
 
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10/08/14

Troy v. Samson Manuf. Corp.: Hyatt Allows Admission of New Evidence for New Issues in 35 U.S.C. § 146 Actions

Category: Administrative Law  
 
 
 
By: John Kirkpatrick, Contributor 
 
TitleTroy v. Samson Manuf. Corp., No. 2013-1565 (Fed. Cir. July 11, 2014).
Issues
[1] Mr. Troy challenges the district court’s refusal to consider evidence pertaining to issues not raised before the Board [in a civil action under 35 U.S.C. § 146].
Troy at *4 (text added).
[2] [E]ven if [Kappos v. Hyatt, 132 S. Ct. 1690 (2012)] requires that the district court admit such new evidence, this holding is applicable to [35 U.S.C. § 145] actions only.
Id. at *8 (text added).
Holdings
[1] "We conclude that the Supreme Court’s decision in Hyatt permits new evidence to be admitted without regard to whether the issue was raised before the Board."  Troy at *5 (text added). "[T]o the extent that our prior precedent, see, e.g., Conservolite v. Widmayer, 21 F.3d 1098, 1102 (Fed. Cir. 1994), held that new evidence on an issue not presented to the Board was generally to be excluded in district court proceedings, it is no longer viable following the Supreme Court’s Hyatt decision." Id. at *6 (text added).
[2] [T]he Supreme Court’s decision in Hyatt applies with equal force to both § 145 and § 146 actions.
Id. at *10 (text added).
 
 
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06/19/14

Q.I. Press Controls v. Lee: Board Must Issue New Grounds of Rejection to Avoid Inconsistencies

Category: Administrative Law 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor
 
TitleQ.I. Press Controls, B.V. v. Lee, No. 2012-1630, -1631 (Fed. Cir. June 9, 2014).
Issues
[1: Obviousness Rejection of Claims 61-72] Quad/Tech argues that the Board erred in rejecting claims 61–72 for obviousness over Ross and Sainio by using hindsight bias to combine the two references […] [and] that Ross and Sainio cannot be combined because the circular lighting configuration of Ross does not teach a high intensity illumination system […]
Q.I. Press Controls, B.V. at *11.
[2: Contradictory 103 Rejection Regarding Claims 1-60] Q.I. Press asserts that the Board’s decision is inherently contradictory, finding that claims 1–60 would not have been obvious because Maruyama and Ross do not disclose a printing press, but also finding that the similar claims 61–72 would have been obvious over a combination of the printing press in Sainio and Ross.
Id. at *16.
Holdings
[1: Obviousness Rejection of Claims 61-72] [C]ombining Ross and Sainio would have been obvious to one having skill in the art at the time of the invention [because the claim language at issue is broad and the asserted combination would give the predictable result of greater degree of illumination].
Id. at *12 (text added).
[2: Contradictory 103 Rejections] [W]hen all [the] references were before the Board, and this court, an obligation is owed to the public not to permit inconsistent results when a proper challenge to that inconsistency is made on appeal. The Board should have observed the similarities between the claims, noted those similarities between the claims and the references before the Board on appeal, analyzed whether the combination of Sainio and Ross would have rendered claims 1–60 obvious, and if so, issued a new ground of rejection.
Id. at *19.
 
 
 
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01/16/14

Novartis AG v. Lee: Appeal of Pre-AIA Patent Term Adjustment Determination

 
Fountain of Youth
 
By: Jesus Hernandez, Blog Editor/Contributor
 
TitleNovartis AG v. Lee, No. 2013-1160, -1179 (Fed. Cir. Jan. 15, 2014).
Issues
[1] [With regards to some of the asserted patents,] Novartis argues that the 180-day period [for challenging the Director's determination in a civil action] is not applicable to its challenges to the final patent term adjustment determinations because, it says, the Director did not make those determinations under paragraph (b)(3) [which governs request for reconsideration before the Director].
Novartis AG at *9 (text added).
[2] Novartis argues that, once three calendar years from the application-filing date have come and gone, time spent in the PTO after that date must be added to the patent term even if it is time spent on a continued examination [RCE] requested after that date.
Id. at *13 (text added).
[3] [T]he PTO contends that any time up until the patent issues, even after allowance, should be excluded from the adjustment awarded to the patentee.
Id. at *15.
Holdings
[1] The applicable version of paragraph (b)(3)—the whole of which subparagraph (b)(4)(A) refers to—addresses all patent term adjustment determinations, not just some. Subparagraph (b)(3)(A) broadly declares that “[t]he Director shall prescribe regulations establishing procedures for the application for and determination of patent term adjustments under [(b)].”
Novartis AG at *9-10.
[2] [T]he patent term adjustment time should be calculated by determining the length of the time between application and patent issuance, then subtracting any continued examination time (and other time identified in (i), (ii), and (iii) of (b)(1)(B)) and determining the extent to which the result exceeds three years. Such a reading ensures that applicants recover for any “delay[s] due to the failure of the [PTO],” without allowing the applicant to recover for “any time consumed by continued examination,” as the statute requires. […]
Id. at *14 (internal citations omitted, text added).
[3] We reject the PTO’s view that the time after allowance, until issuance, is “time consumed by continued examination” and so is excluded from adjustments given to the patentee. Such time from allowance to issuance undisputedly would count toward the PTO’s three-year allotment in a case not involving a continued examination.
Id. at *15.
 
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10/18/13

In re Biedermann: No Altering Obviousness Grounds, Introducing New References during Appeal

 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleIn re Biedermann, No. 2013-1080 (Fed. Cir. Oct. 18, 2013).
IssuesThe central question in the present case is whether the Board and the examiner properly relied on the same articulated reasoning and factual underpinnings in rejecting Biedermann’s claims or whether the Board made new findings and adopted different reasons to support a new ground of rejection, thus depriving Biedermann of both notice and an opportunity to respond [by: [1] relying on an “interchangeability” obviousness finding instead of the examiner's “efficiency”
obviousness finding; [2] introducing a Machinery’s Handbook reference; and [3] not considering negative teachings of a reference concerning machinability].
In re Biedermann at *11 (text added).
Holdings[1] The thrust of the rejection changed when the Board found a new factual basis for the reason to combine [when it altered a combination premised on the efficiency of a square thread to a combination premised on 'avoidance of splaying' by using an interchangeable square thread]. The Board went beyond filling in gaps in the examiner’s reasoning because it is not clear that the examiner’s reasoning survived in the Board’s rejection. Unlike Jung, there is no indication that the Board was merely explaining the examiner’s rejection.
In re Biedermann at *15.
[2] [T]he Board used the Machinery’s Handbook to associate buttress and saw-tooth threads. [...] [T]he association between saw-tooth and buttress threads played an important role, not a minor role, in the Board’s new reasoning by providing the link to associate Cotrel’s threads with one of the threadforms grouped in Steinbock. The Machinery’s Handbook, thus, was used as part of the new ground of rejection.
Id. at *16.
[3] There is no apparent connection between machinability and the examiner’s reason to combine based on efficiency [because it was introduced merely as an additional grounds for combination].
Id. at *17 (text added).
 
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09/26/13

Rambus v. Rea: Board May Not Alter Examiner Grounds for Combination

Category: Administrative Law  
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleRambus, Inc. v. Rea, No. 2012-1634 (Fed. Cir. Sept. 24, 2013).
Issue[1] [Rambus] contends that the Board erroneously placed the burden on Rambus to demonstrate nonobviousness. [2] [Rambus also] asserts that, rather than rely on the examiner’s flawed findings, the Board relied on unsubstantiated conjecture that one could combine [the] iAPX and Inagaki [references] into an operable system.
Rambus, at *9 (text added).
Holding
[1] The Board erroneously placed the burden on Rambus to prove that its claims were not obvious. In reexamination proceedings, “a preponderance of the evidence must show nonpatentability before the PTO may reject the claims of a patent application.”
Rambus, at *10-11.
[2] The Board also exceeded its limited role to “review of the examiner’s decisions during prosecution.” [by changing the grounds for combining the iAPX and Inagaki references.] In re Stepan Co., 660 F.3d 1341, 1344 (Fed. Cir. 2011).
Id. at *11 (text added).
 
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09/20/13

Fleming v. Coward: Pro Se Reminder…Examiner Findings Don't Get Appealed to District Court

Category: Administrative Law  
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleFleming v. Coward, No. 2013-1091 (Fed. Cir. Aug. 12, 2013) (per curiam) [NON-PRECEDENTIAL].
Issue"[T]he PTO defendants [who are patent examiners] argued that the district court lacked jurisdiction over the case because [Applicant] had failed to exhaust his administrative remedies in the PTO." Fleming, at *4.
Holding"The district court was correct to dismiss the complaint against the PTO defendants because of Mr. Fleming’s lack of action in the PTO prior to instituting a civil lawsuit arising from the rejection of his patent application." Fleming, at *6.
 

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09/04/13

In re Adler: Board Affirms Obviousness; No New Grounds of Rejection

Category: Administrative Law 
 
 
 
By: John Kirkpatrick, Contributor 
 
TitleIn re Adler, No. 2012-1610 (July 18, 2013).
Issue(s)[1] “The primary issue on appeal is whether the Board properly found that it would have been obvious in light of the prior art to compare reference values for healthy tissue and blood to determine whether images of the gastrointestinal tract showed “a change in the level of red color content” where that “change correlat[es] to the presence of blood […].” In re Adler, at *6.
[2] “Additionally, Adler argues that the Board relied on a new ground for rejection of the claims at issue and instead should have reopened prosecution.” In re Adler, at *8.
Holding(s)[1] “[The Board’s rationale] is a predictable variation of the combination of Hirata [which equates analyzing red color variances with bleeding] and Meron [which teaches receiving images from a swallowable device].” In re Adler, at *8 (text added).
[2] “While the Board’s explanation may go into more detail than the examiner’s, that does not amount to a new ground of rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).” In re Adler, at *10 (text added).
 

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08/20/13

Versata v. Rea: No Challenging an Initiation of Post-Grant Review in District Court

 Category: Administrative Law
 
By: Jesus Hernandez, Blog Editor/Contributor   
 
TitleVersata Dev. Corp. v. Rea, Case No. 1:13-cv-328 (GBL/IDD) (E.D. Va. Aug. 7, 2013).
Issues“The first issue is whether the AIA precludes judicial review of the PTAB's decision to institute post-grant review in accordance with AIA.” Versata Dev. Corp., at *1.
"The second issue is whether the PTAB's statutory interpretation regarding insistution of post-grant review proceedings constituted a "final agency decision" for which there is no other adequate remedy in a court, thereby providing Plaintiff a cause of action to bring challenge to such a decision to this Court." Id. at *1.
Holdings"The Court holds that it lacks subject matter jurisdiction over Plaintiff's claim because the AIA's express language, detailed structure and scheme for administrative and judicial review, legislative purpose, and nature of the administrative action evince Congress' clear intent to preclude subject matter jurisdiction over the PTAB's decision to institute patent reexamination proceedings. Therefore, Plaintiff's claims are dismissed for want of subject matter jurisdiction under the clear statutory guidance provided by AIA." Id. at *1-2.
"This Court holds that the decision to institute post-grant review is merely an initial step in the PTAB's process to resolve the ultimate question of patent validity, not a final agency action as contemplated by 5 U.S.C. sec. 704." Id. at *2.
 

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07/22/13

Fresenius v. Baxter: Concurrent Proceedings at CAFC and PTO

 Category: Administrative Law 

 

By: Jesus Hernandez, Blog Editor/Contributor 

TitleFresenius USA, Inc. v. Baxter Int'l, Inc., No. 2012-1334, -1335 (Fed. Cir. July 2, 2013) (Newman, J., dissenting).
Issue"[T]he question in this case is whether, under the reexamination statute, the cancellation of claims by the PTO is binding in pending district court infringement litigation." Fresenius, at *9-10.
Holding"In sum, under either the reissue or reexamination statute, if the PTO confirms the original claim in identical form, a suit based on that claim may continue, but if the original claim is cancelled or amended to cure invalidity, the patentee’s cause of action is extinguished and the suit fails." Fresenius, at *9-10.


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