The Current Roundup

CAFC: Mere possibility not enough for inherency. The Court reversed the Board’s obviousness determination in an IPR’s second trip to the Federal Circuit. The Court vacated the Board’s first decision because it was based on a theory that was not set forth in the petition. This time, the Federal Circuit reversed the Board’s finding that the petitioner demonstrated …

PTAB Roundup

CAFC: Article III standing must be maintained throughout appeal. The Federal Circuit dismissed an IPR petitioner’s appeal because the appellant no longer had a cognizable injury-in-fact. Although the appellant was infringing before and during the IPR, the appellant had since abandoned its development of that product and was no longer engaged in or actively planning any …

PTAB Roundup

CAFC: Joined parties may appeal IPR decision. The Board instituted the first petitioner’s IPR, and three days later, three more parties each filed their own petitions accompanied by motions for joinder. The Board joined all three petitioners, each of which relied on the joinder exception to the one-year bar. The patent owner prevailed on the …

PTAB Roundup

SCOTUS: The AIA did not change the on-sale bar. The Supreme Court ruled unanimously that an inventor’s sale can still qualify as prior art under § 102(a) (post-AIA) even though the purchaser is obligated to keep the invention a secret. Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., No. 18-1229 (Jan. 22, 2019). CAFC: Tentative ANDA approval sufficient to confer Article III …

PTAB Roundup

CAFC: Dice game found ineligible for patenting. The examiner rejected the applicant’s claims for a dice game as directed to an abstract idea ineligible for patenting under § 101. The method included placing wagers on whether certain die faces will appear face up, rolling the dice, and paying a payout amount if at least one wagered …

PTAB Roundup

CAFC: Issue preclusion arising from a Rule 36 summary affirmance. In an earlier appeal involving the same patent owner and related patents, the Federal Circuit summarily affirmed several PTAB IPR decisions under Rule 36. That summary affirmance collaterally estopped the patent owner from revisiting in this appeal whether the Board correctly found that a particular …

PTAB Roundup

CAFC: Printed publication case revised.The Federal Circuit reissued its July 27 opinion (reported in the August 10, 2018 Roundup) that vacated the Board’s conclusion that a catalog was not a prior art printed publication. In coming to the same result, the Court explained that the catalog does not need to be made directly available to a …