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April 7, 2017Newsletter

This Week at the Board - April 7, 2017

Federal Circuit Finds Google Waived Claim Construction Arguments; Affirms PTAB Decision

In a recent decision (Fed. Cir. 2016-1901), the Federal Circuit affirmed the Board’s decision to uphold the patentability of U.S. Patent No. 8,601,154 owned by Simpleair Inc. The main argument the appellant (Google Inc.) presented in their appeal to the Federal Circuit was that the Board erred in construing the claim term “central broadcast server.” More specifically, Google argued that the Board applied an unduly limited claim construction that resulted in the Board improperly concluding that a reference cited by Google failed to teach or suggest that limitation. While the Federal Circuit noted Google’s reference did appear to teach the limitation under a newly proffered claim construction, the Federal Circuit ultimately found that Google’s argument was barred by the doctrine of waiver. During the IPR, the Federal Circuit noted, Google failed to assert that the claim construction was improper and additionally agreed with the Board’s interpretation of the claim term. Finally, the Federal Circuit determined that the Board had correctly construed the claims and had interpreted the cited references properly, resulting in an affirmation of the Final Written Decision.

A link to the Federal Circuit Decision is provided here.

PTAB Rules Plaintiff In District Court Litigation Lacks Authority To Act As Patent Owner In IPRs

In a recent order related to IPR2016-00663 and IPR201600669, the Board determined that Global Technologies Inc. (“GTI”) was the Patent Owner of U.S. Patent Nos. 7,215,752 and 7,844,041 (which are the subject of the IPRs) rather than Mr. Keith Raniere, who attempted to assert the patents against the Petitioner in underlying district court litigation. The district court analyzed the issue of patent ownership as it related to standing to bring suit, and ultimately dismissed the case because they found an assignment executed by Mr. Raniere to transfer ownership rights from GTI to himself was invalid. The Court of Appeals for the Federal Circuit affirmed the district court’s dismissal, and Mr. Raniere subsequently filed a now pending request for rehearing en banc. Based on the underlying litigation, the Board found that Mr. Raniere was precluded from asserting his assignment to advance his case for patent ownership. In doing so, the Board cited the doctrine of issue preclusion, which bars the litigation of issues that have already been decided in a preceding suit provided that certain preconditions are met. Ultimately, the Board ordered the Petitioner to serve GTI with copies of documents from the IPR proceeding and effectively barred Mr. Raniere from attempting to establish ownership of GTI for purposes of the IPR. 

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

PTAB Finds Technical Report Filed With University Library Is Not a Printed Publication

In IPR2015-01951, the Board, in its Final Written Decision, found that claims directed to a broadcast technique for delivering information to participants over a computer network were not unpatentable. The Board found that Petitioners’ anticipation and obviousness contentions primarily relied on a technical report that was not disseminated or otherwise made available to the public as required to be considered a printed publication under 35 U.S.C. § 102(a). The report was filed with the University of California, San Diego, Computer Science and Engineering Technical Reports Library, but there was insufficient evidence to show that the report was searchable or indexed in a meaningful way so that a person of ordinary skill in the art would have located it exercising reasonable diligence. In the Reply, the Petitioners introduced evidence to show that the report was also available through a webpage. The Board found that this constituted new evidence as no reason was given why it could not have been presented in the Petition. Even so, the Board found this additional evidence was not persuasive. 

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

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