PTAB Roundup

CAFC: Collateral estoppel across related patents. The Federal Circuit vacated the Board’s decision in an IPR because the Board applied an incorrect claim construction. The Court had previously construed a particular term in a related patent, and that same term was used in the patent-at-issue in the same way. Accordingly, collateral estoppel applied, and the same construction applied, too. The Court remanded for further proceedings using the correct construction. Nestle USA, Inc. v. Steuben Foods, Inc., No. 2017-1193 (Mar. 13, 2018) (Hughes, joined by Dyk and Reyna).

CAFC: Priority chain is intact. The Federal Circuit affirmed the PTAB’s reversal of the Examiner’s rejection in an inter partes reexamination. The Examiner had found that a parent application lacked sufficient support for the claims-at-issue, breaking the priority chain and rendering the claims unpatentable over earlier applications in the family. The Board reversed, ruling that the parent in fact provided adequate support. The Federal Circuit affirmed because substantial evidence, including expert testimony, supported the Board’s fact-finding. Hologic, Inc. v. Smith & Nephew, Inc., No. 2017-1389 (Mar. 14, 2018) (Stoll, joined by Newman and Wallach).

CAFC: Claims not limited to a specific embodiment. The Federal Circuit affirmed the PTAB’s obviousness determination in an IPR. The claims did not expressly limit where a particular “concentration” term should be measured, but the appellant argued that the Board should have required the claimed concentration to occur at a particular location. The specification described the concentration at two different locations with nothing limiting it to one of the locations over the other. Accordingly, the Board correctly construed the claims to encompass having the claimed concentration at either location. Steuben Foods, Inc. v. Nestle USA, Inc., No. 2017-1290 (Mar. 13, 2018) (Hughes, joined by Dyk and Reyna).

District Court: Stay denied despite instituted IPRs on six of seven patents. After the PTAB instituted IPR on all asserted claims of six of the plaintiff’s seven patents, the defendant moved to stay the case. By that time, however, claim construction, fact discovery, expert discovery, and summary judgment briefing was complete. Further, trial was set for June 2018, whereas the instituted IPRs were not due for final written decisions until February 2019. Given the advanced stage of the case and the fact that the plaintiff and defendants were competitors, the Court denied the defendant’s motion to stay. Plastic Omnium Advanced Innovation & Research v. Donghee Am. Inc., Case No. 1:16-cv-00187-278, ECF No. 278 (D. Del. Mar. 9, 2018) (Stark).

PTAB: Two new informative decisions on § 325(d).

Kayak Software Corp. v. International Business Machines Corp., CBM2016-00075, Paper 16 (Dec. 15, 2016). The Board denied institution because the record indicated that the asserted art had already been extensively considered by the Office during prosecution. However, the Board explained that a limited prosecution history, clear error by the examiner, or a cursory consideration of the art may weigh towards institution. (Kim, joined by Kaiser and Cherry).

Becton, Dickinson &a Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 (Dec. 15, 2017). The Board denied institution of some grounds based on certain non-exclusive factors, including the similarity and/or cumulative nature of the prior art and arguments previously presented to the Office, whether the examiner erred during prosecution, and whether additional evidence and facts presented in the Petition warranted reconsideration of the prior art or arguments.

PTAB: Seeking a reissue a concession of unpatentabilityOn the same day that the petitioner filed its IPR petition, the patent owner filed a reissue application to narrow the scope of the claims. After the Board denied institution of the IPR, the petitioner argued in a rehearing request that the reissue filing constitutes an admission that the challenged claims are too broad and unpatentable. The Board rejected petitioner’s argument because there was no indication that the claims were narrowed or would have been obvious “in view of the grounds asserted in the Petition.” (emphasis in original). Composite Materials Tech., Inc. v. Greatbatch, Ltd., IPR2017-01441, Paper 14 (Mar. 7, 2018) (Torniquist, joined by Moore and Roesel).

PTAB: Preliminary Response deadline stays put. Facing 13 IPR petitions (and a lead counsel headed to trial), the patent owner sought a two-month extension for its preliminary responses. The Board denied for lack of good cause. Applied Materials, Inc. v. Dr. Uri CohenIPR2017-00445, Paper 8 (Mar. 7, 2018) (Weinschenk, joined by Barrett).

Opportunities at the Office: The Office is hiring more Administrative Patent Judges. For more information, click here.

*Contributors: Jonathan Strang (ed.), Kevin McNish, Kenneth Weatherwax, David Roadcap, Ben Evans, Christopher Geyer, Jason Heidemann, Arvind Jairam, Fahd Patel, Rebecca Rabenstein, Todd Siegel. These case summaries are factual in nature and do not reflect the opinions of the contributors, their law firms, or the PTAB Bar Association. Individual contributors do not draft or otherwise have any substantive input into summaries of any case in which the contributor (or his or her firm) was involved.