The Current Roundup

CAFC: Not enough to “envisage” a limitation; it must be disclosed: Relying on Kennametal, Inc., v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015), the Board had concluded the claims were anticipated because the ordinary artisan would “at once envisage” a missing claim element. The Federal Circuit reversed. Kennametal’s “at once envisage” rule for anticipation applies only to a combination that is expressly disclosed by the prior art’s listing of a limited number of alternatives. It does not permit filling in undisclosed claim features even if a “skilled artisan would immediately envision them.” Nidec Motor Corp., v. Zhongshan Broad Ocean Motor Co. Ltd., No. 2016 1900 (Mar. 14, 2017) (Moore, joined by Lourie and Taranto).

CAFC: Substantial evidence supports finding of no teaching away: A reference that criticizes, discredits, or discourages investigation into the claimed invention may teach away from the claimed combination. In this case, however, substantial evidence supported the Board’s factual finding of no teaching away despite the art’s criticism of previous search engines’ preview text as “often…cursory, if not cryptic” and “sometimes…gibberish.” These same critical references also acknowledged that “text descriptions—even if cursory or cryptic—and graphical previews both help a user to determine whether a link is relevant.” Meiresonne v. Google. Inc., No. 2016-1755 (Mar. 7, 2017) (Moore, joined by Prost and Lourie).

District Court: No stay because not all asserted claims challenged in IPR: The Court denied the defendant’s motion to stay pending IPR. The IPRs challenged only the independent claim, not the dependent claims. The Court also recognized that complete resolution of the IPR, including appeal, could take up to three years. Nichia Corp. v. Mary Elle Fashions, Inc., No. 4:16-cv-01176-RWS, ECF No. 33 (E.D. Mo. Mar. 10, 2017) (Sippel).

District Court: No stay for many reasons: The Court denied defendants’ motion to stay pending IPR. Only one of the defendants filed IPRs (and thus the other would not be bound by the IPR estoppel), the Board instituted on less than half of the asserted claims, and the defendants directly compete with the plaintiff in the marketplace. Further, the litigation is at a late stage: the parties already exchanged initial and final invalidity and infringement contentions, the Markman hearing is scheduled soon, and trial should occur at about the same time the PTAB issues its final written decisions. Riddell, Inc. v. Kranos Corp., Case No. 16-cv-4496, ECF No. 92 (N.D. Ill. Mar. 12, 2017) (Kennelly).

PTAB: Failed to show a presentation is a prior-art printed publication: Claims challenged by IPR petitioner Coalition for Affordable Drugs survived in part because the Coalition failed to show that a presentation purportedly presented on a webcast and downloadable after the webcast was publicly available. The Coalition did not provide any evidence that ordinary artisans in the relevant field viewed the webcast or were its target audience. The press release advertising the presentation was directed to “equity analysts and institutional investors,” and clicking the hyperlink in the Wayback Machine (an internet archive) for downloading the presentation results in an error message while other hyperlinks on the same archived page still linked to their corresponding presentations. Coalition For Affordable Drugs VII, LLC v. The Trustees of the Univ. of Penn., IPR2015-01835, Paper No. 56 (Mar. 6, 2017) (Green, joined by Obermann and Tierney).

PTAB: SEC filing is the inventors’ own work: Claims challenged by IPR petitioner Coalition for Affordable Drugs survived in part because the Coalition failed to show that an SEC filing was prior art. The Board agreed with the patent owner that the challenged claims were entitled to the provisional’s filing date, which disqualified the SEC filing as prior art under 35 U.S.C. § 102(b) (pre-AIA). Relying on the inventors’ testimony and corroborating testimony from others, the Board also concluded that the pertinent portions of the SEC filing (which related to clinical trials) were the inventors’ own work, disqualifying it as prior art under § 102(a). Notably, the parties disagreed regarding the allocation of the burden of persuasion. The Board held that the burden of persuasion always remains with the petitioner: the petitioner here met its burden of production by presenting as prior art the SEC filing listing others as authors. The patent owner, however, responded with “ample and persuasive evidence” demonstrating that the inventors were the sole source of the pertinent disclosure—enough to arrive at the same result even if the patent owner bore the burden of persuasion. Coalition for Affordable Drugs (ADROCA) LLC v. Acorda Therapeutics, Inc., IPR2015-01850, IPR2015-01853, IPR2015-01857, IPR2015-01858, Paper No. 72 (Mar. 9, 2017) (Mitchell, joined by Bonilla and Green).

PTAB: A draft version can be a printed publication: The patent owner argued that a draft technical specification cannot be a printed publication because its content is not final. The Board disagreed, holding that the draft is still a printed publication because it was sufficiently accessible, despite its editorial comments, tracked changes, informalities, and placeholder text. LG Electronics, Inc., v. Core Wireless Licensing S.A.R.L., IPR2015-01986, Paper No. 34 (Mar. 16, 2017) (Lee, joined by McKone and Cherry).

PTAB: Institution denied because claim term indefinite: The Board denied institution of an IPR because it could not ascertain the differences between the claims and the prior art without “considerable speculation as to the meaning and assumptions as to the scope” of a claim term. ams AG v. 511 Innovations, Inc., IPR2016-01787, Paper No. 15 (March 15, 2017) (Easthom, joined by McKone and Hudalla).

PTAB Statistics Roundup: The Board’s February Trial Statistics are now available. There were 130 petitions filed in February 2017 compared with 150 in January 2016 and 180 in February 2015. Of those 130 petitions, just 2 were CBMs. This was also the first month since January 2016 in which no PGR petitions were filed. The Office also posted new graphical ex parte appeal and interference statistics for February. The number of pending appeals increased from 14,996 in January to 15,040 in February. Technology Center 3600 (Transportation, Construction, Electronic Commerce, Agriculture, National Security and License & Review) had the longest average pendency for appeals at 26.47 months.

Opportunities at the Office: The Office is looking for non-paid externs. For details, click here.

*Contributors: Jonathan Strang (ed.), Thomas Donovan, Kevin McNish, Fahd Patel, Steven Peters, Todd Siegel, Dan Smith, Kenneth Weatherwax, Ben Evans, John Holley, Arvind Jairam, Thomas King, Thomas Pasternak, Rebecca Rabenstein, Diva Ranade, Surenda (Kumar) Ravula, David Roadcap, and Jocelyn Yu. 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.