IP Newsflash

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 recently denied a patent owner’s request for rehearing of an institution decision, rejecting arguments that previously raised evidence of objective indicia should have been addressed in a petition for inter partes review (IPR).

The Federal Circuit reversed and remanded a Patent Trial and Appeal Board (the “Board”) decision declining to analyze patent claims as anticipated or obvious in an inter partes review (IPR) where the Board found the challenged claims to be indefinite. The court noted that IPXL-type indefiniteness at issue (claiming both an apparatus and a method of using the apparatus) does not necessarily prevent the Board from also deciding anticipation or obviousness. The court affirmed that the Board cannot cancel challenged claims for indefiniteness. The court reversed the Board’s determination that the claim term “digital processing unit” was a means-plus-function term and indefinite.

The Federal Circuit vacated a PTAB decision invalidating all challenged claims of U.S. Patent No. 8,908,842 (’842 Patent) and ordered the PTAB to reconsider whether the patent should have been disqualified from covered business method (CBM) review under the “technological invention” exception. In doing so, the Federal Circuit specifically asked the PTAB to explain what part one of the two-part exception means.

Under 35 U.S.C. § 102, the on-sale bar generally holds that the sale of a patented invention more than one year before the filing date invalidates the patent. Before the America Invents Act (AIA), courts held that confidential sales of the patented invention triggered the on-sale bar—no public disclosure of the invention or the sale was required. The AIA—which applies to patents filed after March 16, 2013—amended §102 to state that a patent is invalid if it was “in public use, on sale, or otherwise available to the public before the effective filing date.” In Helsinn Healthcare v. Teva Pharmaceuticals, interpreting the on-sale provision under the AIA for the first time, the Federal Circuit held that the AIA’s on-sale bar similarly does not require that the sale of the patented invention publicly disclose the details of the invention if the existence of the sale is public.

On April 3, 2017, the Patent Trial and Appeal Board (PTAB) declined to institute post-grant review (PGR) of U.S. Patent No. 9,291,250 (the “’250 patent”), finding that it was not eligible for PGR. The petitioner argued that the ’250 patent, which relates to improved bicycle chainrings, was invalid as obvious under § 103 and because it failed to satisfy the written description and definiteness requirements under § 112.

Under the America Invents Act, post-grant reviews are only available for patents having at least one claim with an effective filing date of March 16, 2013 or later. If this condition is not satisfied, the Patent Trial and Appeal Board (PTAB) must dismiss the post-grant review petition. While this standard appears to be simple on its face, it becomes a more complicated issue when a child patent (continuation or divisional) does not contain the same disclosure as its parent patent. In David’s Bridal v. Jenny Yoo, the PTAB addressed this exact issue on a design patent, holding that the parent patent’s disclosure sufficiently supported the “new matter” disclosed in the child patent and denied the post-grant review petition.  

The Federal Circuit, in a 2-1 opinion, recently affirmed the Patent Trial and Appeal Board’s (PTAB) regulation that the PTAB only has to provide a written opinion on the claims actually instituted for inter partes review, not on every claim raised in the original IPR petition. Petitioner Synopsys submitted an IPR petition to invalidate a number of claims in Mentor’s patent—the same patent asserted against Synopsys in litigation. The PTAB instituted the IPR on roughly half of the submitted claims and ultimately invalidated only three claims. Synopsys appealed and argued that the AIA requires a written opinion by the PTAB on all claims submitted in the original petition, not just those claims instituted by the PTAB for review. The Federal Circuit rejected Petitioner’s argument, noting the AIA “is quite clear that the PTO can choose whether to institute inter partes review on a claim by claim basis.” After that initial decision by the PTAB, the court held the AIA only requires the PTAB to provide a written opinion on “challenged” claims—“claims for which inter partes review was instituted.” The Federal Circuit recognized “the statue would make little sense if it required the Board to issue final decisions addressing patent claims for which inter partes review had not been initiated.”