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December 1, 2016Newsletter

This Week at the Board - December 1, 2016

PTAB Denies Institution of PGR for Design Patent

In PGR2016-00021, the Board recently denied institution of post-grant review of U.S. Design Patent No. D736,750.  In their Petitioner for PGR, the Petitioner (Galaxia Electronics Co., Ltd.) challenged the patentability of the claim directed to a video support frame under 35 U.S.C. §§ 101 and 171 for failing to name the correct inventors and as lacking ornamentally, respectively.  The Petitioner attempted to convince the Board that its employees had jointly conceived of at least portions of the claimed design after being engaged by the Patent Owner (Revolution Display, LLC) to develop, manufacture, and supply a video support frame.  In rejecting this argument, the Board found that the Petition failed to demonstrate that it is more likely that not the inventorship was improper because the Petition at best showed (1) Petitioner’s possession of the invention rather than conception, and (2) a mere role in developing a commercial design (e.g., providing drawings).  The Petitioner also contended the design lacked ornamentally because the appearance of each individual element and the design as a whole was dictated by functionality.  The Board found that the Petitioner’s arguments improperly focused on the utility of various elements of the design rather than the design as a whole, and also presented design alternatives that amounted to evidence that the claimed video frame can be and was developed to have different appearances having the same function.  Accordingly, the Board denied the petition and did not institute a trial.  

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

 

Federal Circuit Finds That PTAB Violated APA; Remands For Further Proceedings

In Fed. Cir. 2015-1672 and 2015-1673, the Federal Circuit reviewed the Board’s decisions in IPR2013-507 and IPR2013-508 in which a number of claims of NuVasive, Inc.’s U.S. Patent No. 8,187,334 were found to be unpatentable.  Both IPRs had significant overlap, but ultimately relied on different prior art assertions against similar groups of claims – claims 16 and 17 were the only claims challenged in IPR2013-508 that were not challenged in IPR2013-507.   In the decisions, the Board found that one reference, Michelson, disclosed a particular embodiment that was critical in finding that the challenged claims of the ‘334 Patent were unpatentable over the prior art.  On appeal, NuVasive argued that the they did not receive adequate notice of or opportunity to address the reading of the prior art in relation to the Board’s obviousness analysis in violation of the Administrative Procedure Act (APA).  In relation to IPR2013-507, the Federal Circuit affirmed the Board’s decision and found that NuVasive was given sufficient notice of the prior art that rendered the claims unpatentable.  However, in IPR2013-508, the Federal Circuit found that the Board had violated the APA because (1) the petition for IPR did not address the embodiment of Michelson relied upon heavily in the Board’s decision and (2) the Board denied NuVasive’s motions to strike or file surreplies to address arguments based on this embodiment.  Accordingly, the Federal Circuit vacated the Board’s decision in IPR2013-508 and remanded the case for further proceedings regarding only claims 16 and 17 of the ‘334 Patent.

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

 

Post Grant Outcomes Pilot Results

In April 2016 the USPTO launched a Post Grant Outcomes Pilot, focused on pending patent applications that are related to issued patents undergoing AIA trials.  The purpose of the pilot program was to make examiners more aware of patents that are both involved in AIA trials and that are related to applications the examiners are currently examining.  The program allowed the examiners to more easily identify and consider the prior art and arguments presented in the AIA trials, which might be highly relevant to the patentability determination of the applications they were examining.  A survey of the pilot program participants found that 46% of examiners ultimately referred to at least one reference cited in the corresponding AIA trial petition of the related patent, either by citing it in a rejection or as pertinent prior art.  The pilot program further deployed an upgrade to the examiners’ desktop application viewers which allowed automated access to the contents of related AIA trials.  The program will continue to try and identify best practices for examination, and to provide examiners with a periodic review of post-grant outcomes (e.g., Supreme Court, Federal Circuit, district court, PTAB decisions), so that the examiners will gain a better understanding of the current state of the law.

A link to a Director’s Forum Blog discussing the program is provided here.

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