04/15/15
By: Jesus Hernandez, Blog Editor/Contributor
| Title | Kennametal, Inc. v. Ingersoll Cutting Tool Co., No. 2014-1350 (Fed. Cir. March 25, 2015). |
Issues | [Anticipation] Because all the limitations of Kennametal’s claim are specifically disclosed in Grab, the question for the purposes of anticipation is “whether the number of categories and components” disclosed in Grab is so large that the combination of ruthenium and PVD coatings “would not be immediately apparent to one of ordinary skill in the art.” Wrigley, 683 F.3d at 1361. Kennametal, Inc., at *10. |
| [Obviousness] Kennametal claims that the Board failed to establish a prima facie case of obviousness. Because of the problems relating to cobalt capping, Kennametal contends, it would not have been obvious to combine ruthenium binders with PVD coating. Id. at *13. | |
Holdings | [Anticipation] Grab’s express “contemplat[ion]” of PVD coatings is sufficient evidence that a reasonable mind could find that a person of skill in the art, reading Grab’s claim 5, would immediately envisage applying a PVD coating. Grab col.4 l.59. Thus, substantial evidence supports the Board’s conclusion that Grab effectively teaches 15 combinations, of which one anticipates pending claim 1. Id. at *11. |
| [Obviousness] [B]ecause a person of skill in the art reading Grab would readily envisage the combination of ruthenium binders and PVD coatings, it would have been obvious to that person that these two could be combined with a reasonable expectation of success. Substantial evidence supports the Board’s finding that this express teaching was not significantly undermined by the problem of cobalt capping, especially in view of the similar teaching of Leverenz. Id. at *15. |
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02/24/15
By: John Kirkpatrick, Contributor
| Title | Antares Pharma. v. Medac Pharma. Inc., No. 2014-1648 (Fed. Cir. Nov. 17, 2014). |
| Issue | [Are] the asserted reissue claims of [RE44,846 ("the '846 patent)] invalid for [...] failing the original patent requirement of [35 U.S.C. § 251, requiring] that the original specification expressly disclose the particular invention claimed on reissue[?] Antares Pharma, at *4 (text added). |
| Holding | U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp., 315 U.S. 668 (1942) made clear that, for § 251, “it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.” [...] Rather, the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention. Id. at *15 (text added, internal citation removed). |
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10/14/14
By: Jesus Hernandez, Blog Editor/Contributor
| Title | Virtualagility Inc. v. Salesforce.com, Inc., No. 2014-1232 (Fed. Cir. July 10, 2014). | |
Issue | [Factors A and D] The district court concluded that the first factor— simplification of the issues—was “essentially neutral, if not slightly against” granting a stay because it was “not convinced” by the PTAB’s assessment that cancellation of some or all of the claims during CBM review was “probable.” Virtualagility Inc., at *6. | |
| [CBM Amendment] Defendants argued that the fact that VA has already filed a motion to amend claims in the CBM proceeding increased the likelihood that the CBM proceeding will simplify issues. In its decision denying the motion to stay pending appeal, the court observed that VA’s proposed amendments to the ’413 patent claims in the CBM proceeding were not a part of the record at the time of its decision on the motion now on appeal. Id. at *7. | ||
| [Factor B] Defendants argue that the district court correctly concluded that the early stage of the litigation favors a stay. Defendants contend, however, that the district court did not weigh this factor heavily enough in favor of the stay because it erroneously considered the case’s status at the time it ruled on the motion rather than at the time when the motion was filed—seven months earlier. Id. at *15. | ||
| [Factor C] Defendants argue that the district court erred in concluding that a stay would unduly prejudice VA. They contend that VA will not suffer undue prejudice because the timeframe for CBM review is short. They argue that, in any event, mere delay in having one’s claim adjudicated does not constitute undue prejudice. Defendants argue that VA has not identified any actual risk of fading memories or potentially unavailable evidence. Id. at *20. | ||
Holdings | [Factors A and D] We conclude that the district court clearly erred in finding that the first factor was neutral or slightly against a stay, and that the fourth factor weighed only slightly in favor of a stay. We hold that these factors strongly favor a stay in this case. The district court erred as a matter of law to the extent that it decided to “review” the PTAB’s determination that the claims of the ’413 patent are more likely than not invalid in the posture of a ruling on a motion to stay. Under the statutory scheme, district courts have no role in reviewing the PTAB’s determinations regarding the patentability of claims that are subject to CBM proceedings. Id. at *11. | |
| [CBM Amendment] We conclude that it is proper for us to consider the fact that VA filed a Motion to Amend in our review of the district court’s decision. Defendants did not waive the arguments regarding claim amendments. They argued to the district court that claim amendments during PTAB review are a distinct possibility and, in doing so, gave VA an opportunity to respond to this argument below. […] We also conclude that we are not improperly expanding the record on appeal if we consider the Motion to Amend. […] Cognizant of the limits imposed by Rule 201(b)(2), however, we reiterate that we consider only the fact that a Motion to Amend was filed— not the impact of the proposed amendments on the parties’ claim construction and infringement arguments. Id. at *10-11 (internal citations omitted). | ||
| [Factor B] We hold that the timing factor heavily favors a stay. We note at the outset that it was not error for the district court to wait until the PTAB made its decision to institute CBM review before it ruled on the motion. Indeed, while some district courts ruled on motions to stay before the PTAB granted the petition for post-grant review […], others have waited until post-grant review was instituted, and still others denied as premature the motion to stay without prejudice to refiling after institution of post-grant review […]. We express no opinion on which is the better practice. While a motion to stay could be granted even before the PTAB rules on a post-grant review petition, no doubt the case for a stay is stronger after post-grant review has been instituted. Id. at *16 (internal citations omitted). | ||
| [Factor C] We conclude that the district court clearly erred in finding that the undue prejudice factor weighed heavily against a stay. At best, this factor weighs slightly against a stay. We agree with the district court that competition between parties can weigh in favor of finding undue prejudice. Id. at 21. | ||
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10/03/14
By: Jesus Hernandez, Blog Editor/Contributor
| Title | Benefit Funding Sys., LLC v. Advance Am. Cash Advance Centers Inc.., No. 2014-1122, -1124, -1125 (Fed. Cir. Sept. 25, 2014). | |
| Issue | Appellants’ argument on appeal rests on the single premise that the PTAB is not authorized to conduct CBM review based on § 101 grounds. Consequently, according to Appellants, the district court would not be bound by the results of the CBM review […] Benefit Funding Sys., LLC, at *6. | |
| Holding | The argument that § 101 cannot support CBM review is a collateral attack [since a district court should not review the PTAB’s determination that contested claims are more likely than not invalid in the posture of a ruling on a motion to stay.] Id. at *6-7 (text added). | |
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07/19/14
By: Karthik Subramanian, Contributor
| Title | In re Bd. of Tr. of the Univ. of Ill., No. 2014-122 (Fed. Cir. May 5, 2015) (non-precedential). | |
| Issue | “The Board of Trustees for the University of Illinois (“University”) petitions for a writ of mandamus directing the United States Patent and Trademark Office (“PTO”) and its Patent Trial and Appeal Board (“Board”) to withdraw its orders instituting inter partes review in cases IPR2013-401 and IPR2013-404.” In re Bd. of Tr. of the Univ. of Ill. at *1. | |
| Holding | “The petition is denied [because a party seeking issuance of a writ to vacate an inter partes review cannot establish a clear and indisputable right to relief].” Id. at 3 (text added). | |
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06/22/14
By: Eric Paul Smith, Contributor
| Title | In re The Proctor & Gamble Co., Misc. Docket No. 121 (Fed. Cir. Apr. 24, 2014). |
| Issue | Whether "a decision by the Director [of the United States Patent & Trademark Office ('USPTO')] to institute inter partes review[s]" of the patents at issue "may [] be directly reviewed by this court through the extraordinary means of mandamus." In re The Proctor & Gamble Co. at *2 (emphasis removed from original). |
| Holding | "We conclude that immediate review of such a decision is not available in this court. We therefore deny P&G’s petition for mandamus relief." Id. at *2. |
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06/11/14
By: Jesus Hernandez, Blog Editor/Contributor
| Title | In re Dinsmore, No. 2013-1637 (Fed. Cir. June 10, 2014). | |
| Issue | The applicants argue that, because the ’568 and ’086 patents are not and never have been commonly owned, the recorded terminal disclaimer was “an ineffective, invalid terminal disclaimer” and its filing therefore was an “error” within the meaning of the reissue statute, 35 U.S.C. § 251. In re Dinsmore at *6. | |
| Holding | We affirm the Board’s ruling because the applicants have not identified an “error” underlying the choices made in the original patent that they now seek to revise [and revising a conscious choice is not tantamount to remedying the result of a mistaken belief]. Id. at *7 (text added). | |
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06/09/14
By: John Kirkpatrick, Contributor
| Title | Vaillancourt v. Becton Dickson & Co., No. 2013-1408 (Fed. Cir. April 24, 2014). |
| Issue | Vaillancourt claims [...] that despite his assignment of the entire right, title, and interest in [U.S. Patent No. 6,699,221] to VLV [during reexamination], he was “authorized to continue with all related proceedings including further appeals” in connection with the reexamination. Vaillancourt at *5, (text added, internal citation removed). |
| Holding | The unambiguous language of [35 U.S.C.] § 141 provides that a patent owner alone can appeal a final decision in an inter partes reexamination to this court. Id. at *4 (text added). |
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06/04/14
Consumer Watchdog v. WARF: Consumer Rights Organization Lacks Standing to Appeal Inter Partes Reexam
By: Jesus Hernandez, Blog Editor/Contributor
| Title | Consumer Watchdog v. Wis. Alumni Research Found., No. 2013-1377 (Fed. Cir. June 4, 2014). | |
| Issue | [Attempting to establish an injury in fact sufficient to confer Article III standing,] Consumer Watchdog relies on the Board’s denial of Consumer Watchdog’s requested administrative action—namely, the Board’s refusal to cancel claims 1–4 of the ’913 patent [in an inter partes reexamination]. Consumer Watchdog at *5 (citations omitted). | |
| Holding | Because Consumer Watchdog has not identified a particularized, concrete interest in the patentability of the ’913 patent, or any injury in fact flowing from the Board’s decision, it lacks standing to appeal the decision affirming the patentability of the amended claims. Consumer Watchdog at *8. | |
| Editor's Notes | ||
| For further insight, check out the Audio Brief of oral arguments in Consumer Watchdog v. Wis. Alumni Research Found. by clicking here. | ||
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05/27/14
By: Jesus Hernandez, Blog Editor/Contributor
| Title | K/S HIMPP v. Hear-Wear Tech., LLC, No. 2013-1549 (Fed. Cir. 2013-1549). | |
| Issue | HIMPP argues that the CRU Examiner and the Board failed to consider the knowledge of a person having ordinary skill in the art [as articulated by the prosecuting examiner of the patent application] solely because HIMPP did not provide documentary evidence to prove purportedly well-known facts. K/S HIMPP at *5 (text added). | |
| Holdings | We agree with Hear-Wear that the Board was correct to require record evidence to support an assertion that the structural features of claims 3 and 9 of the ’512 patent were known prior art elements. […] HIMPP must […] “point to some concrete evidence in the record in support of these findings[,]” [in order to reject a claim limitation]. Id. at *6 (text added). | |
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04/29/14
By: Jesus Hernandez, Blog Editor/Contributor
| Title | In re Dominion Dealer Solutions, LLC, Misc. No. 2014-109 (Fed. Cir. April 24, 2014). | |
| Issue | In November 2013, Dominion filed the present petition for a writ of mandamus in this court under 28 U.S.C. § 1651, challenging the Director’s non-institution [of an inter partes review] decision directly in this court. In re Dominion Dealer Solutions, LLC at *3 (text added). | |
| Holding | [Since an inter partes review challenger may not appeal non-institution decision of the PTAB,] Dominion has no “clear and indisputable” right to challenge a non- institution decision directly in this court, including by way of mandamus. Id. at *4 (text added). | |
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04/24/14
By: Jesus Hernandez, Blog Editor/Contributor
| Title | St. Jude Medical v. Volcano Corp., No. 2014-1183 (Fed. Cir. April 24, 2014). | |
| Issue | St. Jude has appealed the Director’s decision not to institute an inter partes review, asserting that this court has subject matter jurisdiction under 28 U.S.C. § 1295 and that 35 U.S.C. § 314(d) does not bar this court’s immediate review of the Director’s decision. St. Jude Medical at *4. | |
| Holding | We hold that we may not hear St. Jude’s appeal from the Director’s denial of the petition for inter partes review. We base that conclusion on the structure of the inter partes review provisions [which only permit appeal of written decisions], on the language of section 314(d) within that structure [which distinguishes the standard for conducting a review from the standard for issuing a ‘written decision’], and on our jurisdictional statute read in light of those provisions [which permit appeal only of 'instituted' reviews]. Id. at *4 (text added). | |
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02/11/14
By: Jesus Hernandez, Blog Editor/Contributor
| Title | Temple Lighting, Inc. v. Tivoli, LLC, No. 2013-1140 (Fed. Cir. Feb. 10, 2014). | |
Issues | [1] Tempo argues that the Board erred in construing “inert to light” differently from the examiner. Temple Lighting, Inc. at *3. | |
| [2] Tempo argues that it did not waive its arguments concerning alternative grounds for affirming the examiner’s rejections under Tivoli’s proposed construction of “inert to light.” Id. at *3. | ||
Holdings | [1] The language of the claims in this case does not contextually define “inert to light.” Nor does the specification expressly reference that term. Nonetheless, the intrinsic evidence supports the Board’s construction. […] In claim construction, this court gives primacy to the language of the claims, followed by the specification. Additionally, the prosecution history, while not literally within the patent document, serves as intrinsic evidence for purposes of claim construction. This remains true in construing patent claims before the PTO. Temple Lighting, Inc. at *6. | |
| [2] [O]ne of the threshold conditions for a cross-appeal is a final decision favorable to patentability. In this case, the examiner rejected all the claims. Thus, the record presented no decision favorable to patentability for Tempo to appeal [such that the alternative grounds of affirming the rejection were not waived]. Id. at *9 (text added). | ||
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01/02/14
By: Jesus Hernandez, Blog Editor/Contributor
| Title | Institut Pasteur & Univ. Pierre et Marie Currie v. Focarino, No. 2012-1485, -1486, -1487 (Fed. Cir. Dec. 30, 2013). | |
Issues | [A] Pasteur proposed amendments both to independent claim 1 and to dependent claim 14 that limited the targeted “DNA of an organism” to chromosomal DNA only. While agreeing that the amendments changed the scope of claim 1, which is not at issue, Pasteur argues that they did not change the scope of claim 14, because the unamended claim 14 itself was implicitly limited to chromosomal DNA [and thus should not be dismissed during post-grant proceedings, during which the patent expired]. Institut Pasteur at *12-13 (text added). | |
Holdings | [A] Non-chromosomal DNA, such as mitochondrial DNA or DNA in an additional plasmid, can be homologous to chromosomal DNA. Thus, the original claim covered situations where non- chromosomal DNA is the targeted DNA. The amendment substantively narrowed the claim in requiring chromosomal DNA as the target. Because amending the claim to target only “chromosomal” DNA substantively altered (narrowed) its scope, the PTO may not issue the amended claim now that the patent has expired, as stated in applicable provisions of a PTO regulation, 37 C.F.R. § 1.530(j), (k). Institut Pasteur at *13. | |
| [B] Here, in ascertaining the scope and content of the prior art, the Board made factual determinations that were not supported by substantial evidence. The Board also failed to give proper consideration to at least two categories of evidence–[1 and 2] teachings in the prior art that targeting a cell’s chromosomal DNA could be toxic to the cell and [3] industry praise and licensing of Pasteur’s invention– that are important to the obviousness evaluation. Id. at *15 (text added). | ||
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10/31/13
By: Jesus Hernandez, Blog Editor/Contributor
| Title | Randall MFG., v. Rea, No. 2012-1611 (Fed. Cir. Oct. 30, 2013). | |
| Issue | In its decision reversing the [Examiner's findings of non obviousness during inter partes reexamination], the Board did not consider the background references Randall had cited as evidence of the knowledge of one of skill in the art. Instead, the Board looked to “the content of the prior art relied upon in rejecting FG Products’ claim 1. Randall at *8-9 (text added). | |
| Holding | By narrowly focusing on the four prior-art references cited by the Examiner and ignoring the additional record evidence Randall cited to demonstrate the knowledge and perspective of one of ordinary skill in the art, the Board failed to account for critical background information that could easily explain why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed inventions. Id. at *12. | |
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