IP Newsflash

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 Patent Trial and Appeal Board denied institution of a petition for IPR after determining that the petitioner failed to show a reasonable likelihood that its primary asserted reference, which was available through the Internet Archive, qualified as a prior art printed publication that was publicly accessible before the critical date. In particular, the board found that the petitioner failed to present sufficient evidence that an interested party exercising reasonable diligence would have located the archived reference.

The Patent Trial and Appeal Board denied institution of an inter partes review after determining that petitioner failed to establish public availability of a prior art reference based on an alleged publication date listed in several digital repositories. The board also held that evidence in the form of a linked webpage is entitled to no weight.

Judge Williams in the District of Delaware recently granted a motion to dismiss the complaint because the patents-in-suit claim ineligible subject matter under 35 U.S.C. § 101. The patents are directed to using and training machine learning models for generating network maps (or television schedules) and optimizing event schedules. The court found the claims invalid because they recite the abstract ideas of producing network maps and event schedules using generic mathematical techniques.

In a final written decision of an inter partes review proceeding, the Patent Trial and Appeal Board found all 12 claims of a challenged patent unpatentable as either anticipated or obvious. Each ground of unpatentability relied, in whole or in part, on Patent Owner’s own prior art, including clinical trials published at ClinicalTrials.gov.

A Petitioner filed a request for rehearing and a request for Precedential Opinion Panel review after the Patent Trial and Appeal Board (PTAB or the “Board”) rejected its petition for post-grant review. The Director of the U.S. Patent and Trademark Office sua sponte granted Director Review and concluded that the PTAB failed to correctly determine whether a certain species inherently anticipated the challenged claims and whether the claims were supported by adequate written description. As to inherent anticipation, the Director concluded that the PTAB erred by, first, failing to acknowledge that a genus claim is anticipated by a prior art species within the genus and, second, declining to consider non-prior art as evidence that the prior art reference disclosed a composition that inherently contained the claimed properties.

In a Final Written Decision, the Patent Trial and Appeal Board has held that prior art under 35 U.S.C. § 102(e) was available in an inter partes review proceeding. The patent at issue was directed to alternating current driven LEDs, LED circuits and AC drive circuits and methods. The Petitioner challenged the claims under § 103(a), relying on a prior art reference (“Martin”) in seven of the nine grounds. Martin described LEDs formed on a single substrate connected in series for use with an AC source.

In an appeal from the United States District Court for the Western District of Washington, the Federal Circuit confirmed that on the issue of inter partes review (IPR) estoppel, the burden of proof rests on the patentee to prove by a preponderance of the evidence that a skilled searcher exercising reasonable diligence would have identified any non-petitioned grounds. Aside from other disputes between the defendant Valve Corporation and patentee Ironburg Inventions, the court addressed the argument that Valve should not have been estopped from asserting invalidity grounds it sought to raise against the challenged patent. The Federal Circuit vacated and remanded for further proceedings regarding the estoppel issue.