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June 9, 2017Newsletter

This Week at the Board - June 9, 2017

PTAB Denies IPR Under § 325(d) Based on Prior Art Considered During Prosecution

In IPR 2017-00320, the Board partly denied institution of inter partes review of a shoe patent under 35 U.S.C. § 325(d) because the same or substantially the same prior art and arguments presented by the petitioner was already presented in prosecution of the application. The petitioner argued that the portion of the prior art disclosure relied upon on was not considered during prosecution. The Board found that the petitioner’s arguments were conclusory and that substantially the same art and arguments were presented to the Examiner. The Board also found that a newly cited reference by the Petitioner was merely cumulative of what was previously presented to the Patent Office.

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

PTAB Grants Motion For Joinder Despite Original Petitioner Being Terminated Due To Settlement

In IPR2017-00624, the Board granted a motion for joinder after the Petitioner in the first IPR was terminated due to settlement.  In the first petition, Microsoft challenged claims 1-40 of the patent.  In the second petition, Facebook challenged a subset of those claims but filed the petition after the 1-year bar, so Facebook moved to join the IPR proceedings.  Microsoft and the patent owner settled the first IPR and the PTAB terminated Microsoft, but the Board decided not to terminate the patent owner until the Board made its decision on the motion to join.  Ultimately, the Board granted the motion to join, so going forward Facebook is now the petitioner, Microsoft is terminated, and the patent owner will be required to defend the patentability of the subset of claims challenged by Facebook.

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

District Court Applies IPR Estoppel, But Permits Patents And Printed Publications To Be Used To Establish Date Of Public Use Or Sale

In 2-13-cv-01015 (TXED May 30, 2017 Order), the Eastern District in Texas recently excluded defendant Microsoft from presenting invalidity theories based on prior art patents and publications, due to IPR estoppel, but allowed Microsoft to present its defense of invalidity based on the LifeSize and Xbox 360 systems. The court allowed Microsoft to use any documents that qualify as patents or printed publications solely for the purpose of establishing the date on which the LifeSize and Xbox 360 systems were in public use or on sale.   

A link to the decision is provided here.

Request For Rehearing Asserts That PTAB Misapplied One-Year Bar Rule

Ford has filed a request for rehearing in IPR2017-00149 and other IPRs, arguing that the PTAB ignored CAFC and PTAB precedent because the Board misapplied the one-year bar rule. Ford argued that the dismissal of its lawsuit with the patent owner was without prejudice, so the dismissal should not have triggered the bar. The PTAB concluded, however, that the dismissal did not leave the parties “as though the action had never been brought” because the dismissal was in favor of a transfer to another district court where Ford had filed a DJ action of non-infringement (but not invalidity). In the request for rehearing, Ford argues that the phrase “leaving the parties as though the action had never been brought” is a statement, not a question or threshold inquiry. Ford argues that the case law clearly supports the position that a voluntary dismissal without prejudice is considered to leave the parties as though the action had never been brought, and that therefore there was no further need for inquiry or determination of whether the parties have been left as though the action had never been brought. 

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

PTAB Applies Estoppel, Finding That Petitioner Reasonably Could Have Raised A Ground Earlier

In IPR 2017-00252, the Petitioner sought a review of claims 10 and 15-19, which were previously the subject of a final written decision in a prior IPR.  To invalidate claim 10 in the subsequent IPR, the petitioner relied upon an IEEE Journal article from 1990. The petitioner had not relied upon this article in the previous IPR. The Board noted that the Petitioner had not demonstrated that a skilled searcher conducting a diligent search would not have been expected to discover the article. Thus, the Board prohibited the petitioner from relying on the article in the subsequent IPR.  

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

Federal Circuit Vacates And Remands, Holding That Board Misconstrued A Claim Term

In Fed. Cir. 2015-1841, the Federal Circuit held that the Board misconstrued the term “lateral, trans-psoas path,” noting that the Board had “no meaningful basis for its interpretation” and that the Board’s interpretation ran counter to the specification.

A link to the Federal Circuit Decision is provided here.

Federal Circuit Vacates and Remands, Holding That Board Failed To Properly Apply Rule Of Reason

In Fed. Cir. 2016-1361, the Federal Circuit held that the Board failed to properly apply the rule of reason to determine whether there was sufficient corroboration of inventor  testimony to demonstrate prior conception. In particular, the Federal Circuit noted that the Board failed to consider numerous pieces of evidence, whereas the rule of reason  requires consideration of all pertinent evidence. 

A link to the Federal Circuit Decision is provided here.

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