February 9, 2018Newsletter

This Week at the Board - February 9, 2018

Board Finds That Textbook Is Not a Printed Publication  

In IPR2017-01395, the Board recently partially granted a petitioner’s request for rehearing. The Board initially denied institution of an IPR. The petitioner then filed a request for rehearing, asserting that the Board had overlooked or misapprehended evidence of record that established a threshold showing that a textbook was a printed publication accessible to the public. The petition itself had only provided a statement that the textbook was published and was prior art, and thus provided no further supporting evidence. The petitioner, however, pointed out in its rehearing request that it had also submitted a declaration, which was a sworn affidavit, attesting to the public nature of the textbook. The Board granted the rehearing request only to the extent that it recognized the declaration as compliant with its rules defining a sworn affidavit. The Board noted, however, that in its institution decision, it was determined that even if accorded due weight as a sworn affidavit, the declaration was insufficient because it failed to describe any facts relating to indexing or cataloging procedures to support an assertion that the textbook would have been locatable by an interested person of ordinary skill.

A link to the decision is found here.


Giving Up Claims in IPR May Not Escape Estoppel

Smith & Nephew, Inc. recently filed an IPR challenging claims 1–9 of U.S. Patent No. 8,821,541 owned by Arthrex. Arthrex disclaimed claims 1–9 and filed a preliminary response, arguing against institution under 37 C.F.R. § 42.107(e), which states “[n]o inter partes review will be instituted based on disclaimed claims.”  The preliminary response also stated that “[b]y filing the statutory disclaimer, Arthrex, Inc. is not requesting an adverse judgment.”  The PTAB, however, entered an adverse judgment, concluding that “our rules permit the Board to construe a statutory disclaimer of all challenged claims as a request for adverse judgment, even when the disclaimer occurs before the Board has entered a decision on institution.”  IPR2016- 001917, slip op. at 6. The adverse judgment estopped Arthrex from obtaining a patent with a claim that is not patentably distinct from the disclaimed claims. This impacted Arthrex’s ability to pursue pending continuation applications. The Federal Circuit agreed with the PTO and found that “§ 42.73(b) gives the Board authority to construe a patent owner’s actions as a request for an adverse judgment.”  The Board therefore can enter an adverse judgment even if a patent owner cancels all claims at issue after an IPR petition has been filed, but before an institution decision.

A link to the decision is found here.


PTAB Reversed Over Obviousness Rejection Based On Non-Analogous Art

The Federal Circuit recently reversed and remanded in-part a decision of the PTAB to invalidate claims of Smith & Nephew’s U.S. Patent No. 7,226,459 directed a “Reciprocating Rotary Arthroscopic Surgical Instrument” that is used to cut semi-rigid human tissue. The ’459 patent teaches that conventional arthroscopic surgical instruments tend to bounce away from semi rigid tissue. The claimed device overcame these deficiencies by using a drive that simultaneously rotates, translates, and reciprocates to cut into large volumes of semi-rigid tissue. During an inter partes reexamination, the Examiner issued ten rejections and the Board found that all the claims at issue were unpatentable. The Federal Circuit overturned two obviousness rejections on the grounds that the main reference, Galloway, was not analogous art. Galloway was directed to a “Reciprocating Apparatus and Cam Follower for Winding a Package” that winds glass fiber strands to form packages. The Board found that Galloway was relevant to solving the technical problem of converting rotational motion into simultaneous rotational, translational, and reciprocal motions. The Federal Circuit determined that the Board erred by too narrowly construing the problem addressed by the ’459 patent. Instead of being directed to the problem of cutting large amounts of tissue, Galloway was directed to the problem of winding glass fiber. “Even though both ended up with similar mechanical solutions, it is beyond a stretch to say that Galloway ‘logically would have commended itself to an inventor’s attention in considering his problem.’”  Because Galloway was non-analogous, the Board was reversed and the decisions on obviousness were remanded.

A link to the decision is found here.

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