IP Newsflash

The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent owner had not taken inconsistent positions but warned patent owner that it had an ongoing duty to produce any information inconsistent with arguments made during the present IPR, even if that information related to arguments patent owner had dropped at the ITC.

The Federal Circuit recently upheld the USPTO’s authority under the estoppel provision 37 C.F.R. § 42.73(d)(3)(i) to prohibit a patent owner from obtaining patent claims that are not patentably distinct from claims previously declared unpatentable in inter partes review (IPR) proceedings. However, the court clarified that the regulation applies only to new claims or amended claims, not previously issued claims.

The Director of the USPTO initiated sua sponte review of a PTAB panel’s decision to impose sanctions based on patentee’s conduct during IPR proceedings. The PTAB cancelled all of patentee’s claims, including those not unpatentable on the merits, after finding that patentee deliberately withheld data relevant to the patentability of the claims at issue. In her review, the Director addressed which regulations are implicated upon a party’s misconduct during AIA proceedings and addressed whether entry of judgment in the trial was an appropriate sanction.

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.

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.