Insights

The Federal Circuit in Sanho Corp. v. Kaijet Technology International Limited, Inc., No. 2023-1336 (Fed. Cir. July 31, 2024) recently addressed the prior art exception of a “public disclosure” under 35 USC § 102(b)(2)(B).  Affirming a decision of the U.S. Patent Trial and Appeals Board (“PTAB”), the court held that “publicly disclosed” is only satisfied if the invention was made available to the public, and a non-confidential but otherwise private sale of an invention is not a sufficient “public disclosure”.  This case provides a cautionary tale that disclosing or selling an invention before filing a patent application is fraught with risk.

A petition for Inter Partes Review (IPR) kicks off an IPR proceeding, and is required to set forth the grounds of invalidity and how the claim terms should be construed. In the precedential opinion Axonics, Inc. v. Medtronic, Inc., the Federal Circuit held that if the patent owner proposes, or the Patent Trial and Appeal Board (PTAB) adopts, a claim construction that is different from the construction proposed by the petitioner, the petitioner should be given an opportunity to present invalidity arguments and evidence under the new construction. In responding to the new claim construction, however, the petitioner is limited to the prior art of record, and it may not rely upon new prior art references. The Federal Circuit left open whether the petitioner may rely upon different embodiments in a previously cited reference.

The PTAB ruled last week that the common law doctrine of claim preclusion only applies at the PTAB in one direction, holding that Congress did not intend for an adverse district court judgment to block a party from pursuing a subsequent inter partes review challenge. 

On February 24, 2023, the Director of the United States Patent and Trademark Office (“USPTO”) issued a precedential Director Review Decision in the Inter Partes Review (“IPR”) of Nested Bean, Inc. v. Big Beings Pty Ltd.[1] The decision modified the Patent Trial and Appeal Board’s (PTAB) final written decision that had found all challenged multiple dependent claims fully invalid, notwithstanding the fact that one of the independent claims from which the multiple dependent claims depended was not found to be invalid.[2]

Although the Patent Trial & Appeal Board’s (PTAB) reliance on Fintiv to deny petitions for Inter Partes Review (IPR) has waned since Kathi Vidal was named Director of the USPTO and the advent of Sotera stipulations, these so-called Fintiv denials remain the subject of intense scrutiny by the patent bar. On March 13, 2023, the Federal Circuit Court of Appeals revived a challenge to the PTAB’s practice of discretionary denials under Fintiv, allowing it to proceed before the district court.[1] This revival will no doubt be welcomed by patent challengers who dislike the PTAB’s current practice under Fintiv.

When you are embroiled in a contentious battle with your competitor in an inter partes review (IPR) proceeding, what is your ultimate goal? To win, of course. But what are your odds of success? This alert delves into the win rates for both patent owners and patent challengers over the last four years at the PTAB and provides predictions for what to expect in 2023.

Just over a week after the Supreme Court’s decision in Arthrex, the USPTO has issued preliminary guidance on how the Office plans to implement the Director-review process required by the Court’s decision. The Office intends to treat the Director reviews much like the current request for rehearing process. Namely, a request for the Director’s review must satisfy the timing requirements of a request for rehearing (37 C.F.R. 42.71(d)), and a timely request for Director review will reset the time for appeal or civil action pursuant to 37 C.F.R. 90.3(b). But unlike requests for rehearing by the panel of administrative patent judges, which must point out an argument or issue that the Board “misapprehended or overlooked,” the Director can review any issue, whether one of fact or law. The Director also has de novo review authority, so need not give deference to the panel’s decisions under review. Further, the Director can initiate a review sua sponte. When sua sponte review is initiated, the parties to the proceeding will be given notice and may be given an opportunity for briefing.

Trademark applicants and registrants may experience increased scrutiny of their trademark use claims in light of the results of a recent Pilot Program, conducted by the United States Patent and Trademark Office (USPTO), showing that fifty percent (50%) of approximately 500 randomly selected registrants could not support the claims made in previously filed Declarations of Use. See USPTO Report. Each selected registrant had been asked to submit specimens showing use for two additional goods or services per class in addition to the specimen already submitted with the Declaration.

On June 20, 2014, the U.S. Patent and Trademark Office's Trial and Appeal Board, for the first time, rendered final written decisions in inter partes review proceedings of pharmaceutical related patents, specifically claims covering compositions for and methods of making and using folate-containing dietary supplements said to address elevated levels of homocysteine in the blood that can lead to cardiovascular, ocular, neurological and skeletal diseases. Since the inter partes review procedure went into effect in September 2012, more than 1350 patent challenges have been initiated, more than 700 trials instituted, and more than 65 final written decisions issued, but these are the first final written decisions in cases involving pharmaceutical related patents. Of particular significance, the Board found all of the challenged patent claims it reviewed to be unpatentable.

In CLS Bank International v. Alice Corp. Pty. Ltd., Appeal No. 2011-1301 (Fed. Cir. May 10, 2013) (en banc), a closely watched appeal with over twenty amicus filings, a divided court reversed its previous panel decision and held that the claims at issue were not directed to eligible subject matter under 35 U.S.C. § 101. The court's one-paragraph per curiam opinion was followed by five separate non-precedential opinions and an "Additional Reflections" section by Chief Judge Randall Rader presenting diverging views on the proper analytical framework for assessing patent eligibility under 35 U.S.C. § 101. The failure of a majority of the court to agree on a particular analytical framework means that absent a decision by the Supreme Court, there will be much uncertainty as to whether any particular software patent claim is patent-eligible under 35 U.S.C. § 101.

A court in California has issued the first decision to address the question of whether the activities of patent aggregators – entities formed to shield operating companies against infringement suits by non-practicing entities ("NPEs," or so-called "patent trolls") – raise anticompetitive concerns. Operating companies seeking to fend off suits by patent trolls have increasingly looked to one another for "collective" solutions to the threat posed by NPEs, and this recent decision offers some guidance about how those solutions will be analyzed under the antitrust laws.

In InterDigital Commc'ns, LLC v. Int'l Trade Comm'n, No. 2010-1093 (Fed. Cir. Jan. 10, 2013), the Federal Circuit held that the domestic industry requirement of Section 337 can be satisfied by domestic licensing activities standing alone, even if no product covered by the patents-in-suit is manufactured domestically or by a domestic entity. This decision may result in more Non-Practicing Entities ("NPEs") gaining easier access to the U.S. International Trade Commission ("ITC"), where injunctive relief in the form of an exclusion order is more readily available than injunctive relief from district courts.

A contractual covenant that bars a future challenge to the validity of a patent is unenforceable if it is made before the parties have engaged in litigation involving a validity challenge. Once the issue of patent validity is litigated, however, the public's interest in discovering invalid patents is more or less satisfied, and a "no-challenge" clause in a settlement agreement can be enforced. So said the Second Circuit in the case of Rates Technology Inc. v. Speakeasy Inc., Case No. 11-4462 (2d Cir., July 10, 2012).

On February 10, 2012, the Federal Circuit affirmed a jury's determination of willful infringement and a district court's subsequent award of $371 million in enhanced damages. That victory was taken away, however, when the Federal Circuit vacated its earlier ruling and issued a new panel decision in Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., Case No. 2010-1510 (Fed. Cir., June 14, 2012). The new decision builds on the 2007 Seagate test for willfulness and adds a further refinement that a judge, not a jury, must make a threshold objective assessment of an accused infringer's defenses in view of the risk presented by an asserted patent. If a judge first determines that an accused infringer's actions are objectively reckless, then a jury may be allowed to subjectively determine whether the risk of infringement was known to the infringer. The final determination of willful infringement is therefore a two-part test. The first part is performed by a judge as a matter of law, subject to de novo review. The second part is performed by a jury as a matter of fact and is reviewed for substantial evidence.

On September 16, 2011, the America Invents Act was signed into law by the President. The Act includes significant changes to U.S. patent law, which are summarized below. Some of these changes are effective immediately, while others will become effective over the next several years.

On August 30, the U.S. Court of Appeals for the Federal Circuit issued an en-banc decision affirming the International Trade Commission's ("ITC") holding that the "patent misuse" doctrine did not prevent U.S. Philips Corporation ("Philips") from enforcing its patent rights against Princo Corporation and Princo America Corporation (collectively "Princo").  The court's decision, Princo Corp. v. International Trade Comm'n, No. 2007-1386 (Fed. Cir. Aug. 30, 2010) confirms the narrow scope of the patent misuse doctrine, and underscores the broad protection afforded patent holders when licensing their patents.  The case also highlights the challenges that can arise when reconciling intellectual property and antitrust law.

There is no abuse of discretion in a Patent and Trademark Office denial of full registration to practice before the PTO to a nonimmigrant foreign individual, as full registration would have authorized that individual to do work in which she could not lawfully engage and would have been inconsistent with the terms of her visa, a Federal Circuit panel concludes in Catherine Lacavera v. Jon W. Dudas (No. 05-1204; February 6, 2006).