IP Newsflash

In a recent inter partes review proceeding, the Patent Trial and Appeal Board relied on compelling evidence of secondary considerations to hold all challenged claims not unpatentable under 35 U.S.C. § 103. Specifically, the PTAB found the patent owner’s evidence of industry praise and acceptance sufficiently persuasive to conclusively decide the obviousness issue.

A recent ruling from the Patent and Trial Appeal Board (PTAB) highlights the critical role that collateral estoppel (also known as issue preclusion) can play in inter partes review (IPR) proceedings. In a final written decision issued on January 13, 2020, the Board determined that Petitioner Rimfrost AS had shown, by a preponderance of the evidence, that the challenged claims of Aker Biomarine Antarctic AS’s U.S. Patent No. 9,375,453 (the “’453 Patent”) are obvious. (The Board reached the same conclusion with respect to Aker’s proposed substitute claims and therefore also denied Aker’s contingent motion to amend.) The Board based its decision in part on its finding that Aker was collaterally estopped from asserting two “reasonable expectation of success” arguments against Rimfrost’s obviousness attack, since Aker had unsuccessfully raised those same arguments, no less against the same prior art, in previous IPR proceedings involving different patents within the ’453 Patent’s family.

The Patent Trial and Appeal Board (PTAB) recently designated three more decisions as informative, bringing the total number of informative decisions to 13 for 2019. Two decisions—one final and one on institution—address examples of insufficient rationale for combining prior art references to support obviousness under 35 U.S.C. § 103. The third decision applies the United States Patent and Trademark Office’s (USPTO) 2019 guidance on patent eligibility under 35 U.S.C. § 101 to reverse an examiner rejection, where the Board found that the claimed computer-implemented method was not an abstract idea.

For nearly two decades, the Eastern District of Texas has been a hotbed of patent litigation. Even after the Supreme Court’s 2017 TC Heartland decision narrowed a plaintiff’s venue options, the Eastern District of Texas still sees more patent infringement cases than almost any other jurisdiction. It has controlled its docket by, among other things, adopting local patent rules that require early disclosure of Infringement and Invalidity Contentions. For example, Patent Rule 3-3 requires each party opposing a claim of patent infringement to serve Invalidity Contentions detailing the party’s allegations that each challenged claim is invalid under 35 U.S.C. §§ 102, 103 or 112. Last month, Chief Judge Gilstrap augmented this rule with a standing order that requires a party to serve “Eligibility Contentions” if the party intends to allege that any claim is directed to unpatentable subject matter.

The Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board finding nonobvious the claims of U.S. Patent No. 7,772,209 (the “’209 Patent”), which are directed to a method of treating cancer.

The Patent Trial and Appeal Board (PTAB or “Board”) recently denied the institution of an inter partes review (IPR) petition where the Patent Office had previously considered the asserted prior art, despite Petitioner’s attempt to present that prior art in a different way.

A district court in California has granted-in-part a Plaintiff’s motion for summary judgment of no invalidity under 35 U.S.C. § 103 due to inter partes review (IPR) estoppel. During the pendency of the litigation, Defendants filed 10 IPR petitions. The Patent Trial and Appeal Board (PTAB) issued final written decisions finding that four patent claims asserted in the litigation were not unpatentable.

On October 6, 2017, the Patent Trial and Appeal Board (the “Board”) granted institution of inter partes review under 35 U.S.C. § 103(a) of claims directed to an online game. Notably, institution was granted despite the Board reserving determination on the patent owner’s argument that the petition should be denied under 35 U.S.C. § 315(b) as time-barred.