IP Newsflash

In a recent decision issued in Louisiana-Pacific Corp. v. Huber Engineered Woods LLC, the Patent Trial and Appeal Board addressed the showing that a petitioner for inter partes review must make to demonstrate that an asserted prior art reference pulled from the Internet qualifies as a “printed publication” for purposes of an obviousness or anticipation challenge. Specifically, the board examined whether the petitioner had met its burden for establishing a reasonable likelihood that two website screenshots were publicly accessible before the challenged patent’s critical date. After finding that the petitioner had not done so, the board went on to deny institution of the requested IPR.

In an August 18 memorandum¹, the U.S. Patent and Trademark Office (USPTO) issued binding agency guidance on the proper role of “applicant admitted prior art” (AAPA) in inter partes review (IPR) proceedings. The memorandum clarified that AAPA, which generally consists of the applicant’s statements in a challenged patent, cannot serve as the sole reference in an invalidity ground because AAPA is not a “prior art patent or printed publication” under 35 U.S.C. § 311(b). AAPA may, however, be used to show “general knowledge” in the art at the time of the invention if it is asserted in combination with other, qualified prior art.

A magistrate judge determined that a prevailing party in a district court litigation could be entitled to an award of attorneys’ fees based solely on conduct during an inter partes review (IPR) proceeding.

On July 25, the Patent Trial and Appeal Board (PTAB) ruled that amendments made after a patent issues do not make the patent eligible for post-grant review. The patent at issue, U.S. Patent No. 9,108,890 (the ’890 patent), is generally directed to a method for manufacturing training aids that train explosives detection dogs to detect homemade explosives in various environments. The petitioner, David O. B. A. Adebimpe, filed a petition requesting post-grant review of the ’890 patent. The patent owner, Johns Hopkins University, argued that the ’890 patent is ineligible for post-grant review because it does not meet the statutory filing date requirement. Post-grant review proceedings under the America Invents Acts are available only for patents that issue from applications where at least one claim has an effective filing date on or after March 16, 2013. The ’890 patent was filed on February 25, 2013, and claims priority to a provisional application filed October 4, 2012. The claims of the ’890 patent were amended on March 17, 2015.

Under the new post­grant proceedings created by the America Invests Act of 2011 (AIA), unexpired patents are given their broadest reasonable interpretation (BRI) in light of the specification. On April 1, 2014, after all matters in an inter partes review (IPR) proceeding titled Amkor Technology, Inc. v. Tessera, Inc., IPR2013­00242, had been fully briefed, discovery had been concluded, and oral argument was scheduled for May 21, 2014, Tessera filed a terminal disclaimer disclaiming the remainder of the patent term and asked the Board to interpret the challenged claims, not under the BRI standard but as a district court would according to Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Citing its authority under 37 C.F.R. § 42.7(b), the Board sua sponte ordered that the terminal disclaimer filed in the patent owner's application for the challenged patent be held in abeyance and that the challenged claims in the instant proceeding continue to be given their broadest reasonable interpretation. The Court cited the resources expended by the parties since the initiation of the inter partes review, the failure of the patent owner to file a terminal disclaimer during the course of reexamination and the potential for abuse if the patent owner’s actions were permitted. “The only remaining task is the oral hearing, during which the parties may not make new arguments. It is not feasible, at this late stage of the proceeding, to change the standard by which the challenged claims will be interpreted, since all of the arguments and evidence we have before us have applied the broadest reasonable interpretation standard. We are persuaded that the most appropriate course of action, given the late stage and particular facts of this proceeding, is to hold the terminal disclaimer in abeyance until the conclusion of the proceeding. Doing so will ensure that this proceeding is completed in a timely and efficient manner that is fair to both parties.”