Category Archives: IP

Treatise Update: Post-Grant Proceedings Before the Patent Trial and Appeal Board

Post-Grant Proceedings Before the Patent Trial and Appeal Board guides readers through the process of initiating a post-grant proceeding, taking discovery, seeking sanctions, proposing and opposing claim amendments, effectively advocating at the oral hearing, appealing to the Federal Circuit, and handling a wide array of issues involving co-pending district court litigation.

Updates from Release #10 include:

  • In Chapter 2, the section on Claim construction discusses changes to the PTAB standard for petitions filed after November 13, 2018, from the broadest reasonable interpretation standard to the Phillips v. AWH Corp. standard used in civil actions and at the International Trade Commission. See § 2:5, at note 57.
  • In Chapter 3, a section on Standing—real party in interest discusses Applications in Internet Time, LLC v. RPX Corp., in which the Federal Circuit held that “the focus of the real-party-in-interest inquiry is on the patentability of the claims challenged in the IPR petition, bearing in mind who will benefit from having those claims canceled or invalidated.” See § 3:2.3[A], at note 46.
  • In Chapter 3, the section called Joinder discusses the first case to be taken up by the PTAB’s Precedential Opinion Panel, which determined that, under appropriate and limited circumstances, a petitioner may join its own previously instituted IPR to request joinder and institution of new issues (Proppant Express Investments, LLC v. Oren Technology, LLC). See § 3:6, at note 193.
  • In Chapter 8, Amendments to claims discusses the notice of proposed rulemaking put forth by the USPTO on October 21, 2019. See § 8:3.1, at note 99.
  • In Chapter 8, under the section Inter partes review—timelines, a new figure 8-1 depicts the anticipated trial flow of an inter partes review proceeding, depending on whether or not a second, revised motion to amend is filed by the patent owner. See § 8:3.1.
  • Chapter 14, Appeals to the Federal Circuit includes updated information on the number of PTO appeals filed in the CAFC. See § 14:1, at note 2.

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2018 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit

Each year, the Federal Circuit Yearbook provides a concise, comprehensive review of every patent decision published by the U.S. Court of Appeals for the Federal Circuit during the preceding year. With the Yearbook, readers may conveniently follow all recent patent law developments in the Federal Circuit, presented in a manner that reduces specialized patent and technical jargon to a minimum.

Cases summarized in the Yearbook include the following, among many others:

Utility and Inventions Patentable: Where claims “are substantially similar and linked to the same” law of nature, analyzing representative claims is proper. Section 101 issues may be resolved at the pleading stage before formal claim construction: “we have repeatedly affirmed § 101 rejections at the motion to dismiss stage, before claim construction or significant discovery has commenced.” See Cleveland Clinic Foundation, Cleveland Heartlab, Inc. v. True Health Diagnostics LLC, discussed in § 1:1.

Novelty and Statutory Bars: Federal Circuit concludes that inventor declaration without corroborating evidence alone is not always sufficient to overcome section 102(e) prior art. Despite prior case law (particularly in the U.S. Court of Customs and Patent Appeals), Federal Circuit seems to move law under section 102(e), directed to showing prior disclosure subject matter was not “by another,” closer to case law under section 102(g), directed to showing prior inventorship. See EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc., discussed in § 2:4.

Nonobviousness: Circuit Judge Newman, in dissent, urged that it is time to “remedy” the Graham analysis—namely that the objective factors should be considered together with the first three Graham factors rather than first determining whether a prima facie case of obviousness had been shown. See Merck Sharp & Dohme Corp. v. Hospira, Inc., discussed in § 3:7.

Claim Construction: Using functional language in an apparatus claim does not necessarily mean that the claim improperly covers both an apparatus and method. Functional language described capabilities of a system rather than user actions. See MasterMine Software, Inc. v. Microsoft Corp., discussed in § 6:5.

The 2018 Federal Circuit Yearbook is available on PLI PLUS, our online research database. If you’d like to purchase a print copy, please email or call 877.900.5291.