October 4, 2016Newsletter

This Week at the Board - October 4, 2016

Federal Circuit Dismisses Appeal of PTAB Decision that Assignor Estoppel Does Not Apply to IPR Proceedings

In Husky v. Athena, No. 2015-1726, the Federal Circuit dismissed Husky’s appeal challenging the PTAB’s conclusion that assignor estoppel is inapplicable to IPR proceedings.  The Federal Circuit focused its analysis on whether it had jurisdiction to hear Husky’s appeal under 35 U.S.C. § 314(d).  The court relied on the recent Supreme Court decision in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) and the Federal Circuit’s earlier decisions—Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015) and Achates Reference Publ’g, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015)— to conclude that it lacked jurisdiction to hear Husky’s appeal regarding the applicability of assignor estoppel to IPR proceedings. 

On cross-appeal, Athena challenged the PTAB’s finding that a prior art reference did not incorporate by reference another document.  The court agreed with Athena stating that the "incorporation standard relies only on the reasonably skilled artisan and his or her ability to deduce from language, however imprecise, what a host document aims to incorporate.”  The court vacated the PTAB’s decision on incorporation by reference and its finding of no anticipation with respect to certain  claims and remanded for further consideration.

A link to the Federal Circuit’s Decision is provided here.


Federal Circuit Affirms PTAB Decision Upholding Examiner’s Rejection in Inter Partes Reexamination

In ClassCo, Inc. v. Apple, Inc., No. 2015-1853, the Federal Circuit affirmed the Board’s decision to uphold an examiner’s rejection of the claims of U.S. Patent No. 6,970,695 as being obvious.  In affirming the Board’s decision, the Federal Circuit first rebuffed ClassCo’s argument that KSR requires a prior art combination having a unification of prior art elements without changing their respective functions, noting KSR truly instructs that an obviousness inquiry requires a flexible approach.  However, the Federal Circuit went on to admonish the Board’s near blanket dismissal of ClassCo’s objective evidence of non-obviousness because the Board improperly afforded no weight to the evidence related to features not found in the prior art and conducted a flawed analysis of ClassCo’s evidence of commercial success.  The Federal Circuit also disagreed with the Board’s finding that the claims were categorically not commensurate with the features praised by the Patent Owner’s evidence.  Even after affording proper weight to the secondary considerations, though, the Federal Circuit ultimately found that there was no resulting error in the conclusion of obviousness because the evidence still failed to present a strong, convincing case of non-obviousness.

A link to the Federal Circuit Decision is provided here.


PTAB Denies Joinder Based on Failure to Explain Modifications to Schedule and Discovery, and on Adverse Impact on Board’s Ability to Complete the Proceeding in a Timely Manner

In IPR2016-00853, the Petitioner requested joinder of the proceeding with another inter partes review.  The Board denied the joinder, noting that the Petitioner did not explain specific modifications to the schedule that would be necessary to account for the additional issues, grounds, and prior art raised in the additional Petition.  Nor did the Petitioner explain how briefing and discovery could be simplified.  Additionally, the Board noted that under the circumstances, joinder would have a significant adverse impact on the Board’s ability to complete the existing proceeding in a timely manner.  For these reasons, joinder was denied.  

A link to the PTAB’s Decision is provided here.


PTAB Denies Consolidation of Proceedings Based on “Inherent Tension”

In IPR2016-00204, the Petitioner requested consolidation of the inter partes review with a corresponding ex parte reeaxamination.  The Board denied the request, noting that the legal and factual considerations in the two proceedings were different, and also noting that an ex parte reexamination generally differs in notable aspects from an inter partes review, and that there is an “inherent tension” in attempting to unify proceedings that are intended to be distinct from one another.  The Board recognized the Petitioner’s concern that inconsistent outcomes may result if the matters were not consolidated.  However, the Board addressed this by requiring the parties to file as an exhibit in the inter partes review a copy of any action, decision, or other substantive paper issued in the ex parte reexamination, along with a  non-argumentative one-page notice regarding the filing.  The parties were also required to file any decision, order, or other substantive paper issued by the Board during the inter partes review in the corresponding ex parte reexamination.

A link to the PTAB’s Decision is provided here.

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