Federal Circuit: On-Sale Bar Still Applies to Secret Use of a Patented Method Under AIA

The Federal Circuit recently affirmed an ITC holding that the AIA’s § 102 on-sale bar applies to the sale of a product made according to a secret process when that sale occurs more than one year before the patent’s effective filing date. In so doing, the court confirmed that, despite changes to the text of § 102, the AIA did not undo long-settled pre-AIA precedent that the on-sale bar applies when, before the critical date, a party sells products secretly made using a patented process.

The Patent Trial and Appeal Board exercised its discretion under General Plastic to deny institution of a follow-on petitioner’s request for inter partes review despite determining that the petitioner did not have a “significant relationship” with a previous petitioner that had challenged the same patent. The PTO Director vacated the board’s decision, holding that “where . . . the first and second petitioners are neither the same party, nor possess a significant relationship . . . General Plastic factor one necessarily outweighs the other . . . factors.”

The Patent Trial and Appeal Board has denied institution of an inter partes review for a design patent in part because the petitioner failed to show that three asserted references qualified as prior art. Specifically, the PTAB ruled that images of a boot design taken from a website after the critical date, coupled with evidence that the design was on sale before the critical date, was insufficient to establish the design as prior art. Critical to the PTAB’s determination was the fact that webpages are “dynamic” and change over time, rendering images taken from the current webpage insufficient to establish prior disclosure.

The Federal Circuit dismissed an appeal of a final written decision in an IPR based on issue preclusion where a district court had dismissed a complaint finding the patent claims subject-matter ineligible. The patentee had filed a second amended complaint, but then voluntarily dismissed the case without asking the district court to vacate its prior invalidity ruling, which it also never appealed. The Federal Circuit held that the initial invalidity order was interlocutory when issued but merged with the voluntary dismissal with prejudice, making the invalidity determination final and the present appeal moot.

The Patent Trial and Appeal Board denied institution of an inter partes review petition because a prior art patent figure did not provide exact dimensions, and therefore could not meet the relevant claim limitation.  On review from the denied institution, the Director explained that a drawing may be relied upon for what it clearly shows, vacating and remanding for a determination of whether the reference is clear on its face or reasonably would have suggested the limitation in view of the supporting expert testimony.

In a case it described as “‘a prime example’ of when ODP does not apply,” the Federal Circuit recently reversed a decision from the District of Delaware that invalidated a claim for obviousness-type double patenting (ODP), holding that a first-filed, first-issued, later-expiring claim cannot be invalidated for ODP based on a later-filed, later-issued, but earlier-expiring claim from the same family. In so doing, the court answered the question of whether a later-filed, later-issued patent in the same family can be an ODP reference against the first application in the family—it cannot. The court also clarified the scope of its prior ruling in In re Cellect, explaining that case answered a different question—the question of what expiration date should be used for an ODP analysis.

The Patent Trial and Appeal Board has granted a petitioner’s motion to submit supplemental information, over patent owner’s objections, concerning the public availability of references that were relied upon to support grounds of unpatentability in the petition.

The Patent Trial and Appeal Board instituted an inter partes review over patent owner’s objections that the petition did not timely identify all real parties-in-interest (RPI) and was filed by a phantom legal entity after petitioner had undergone a corporate reorganization. The PTAB accepted petitioner’s updated mandatory notices that identified the correct RPI, revised the caption, and instituted the IPR proceeding.