The Appellate Year in Review
presented by the PTAB Bar Association’s Committee on Appeals from the PTAB
Each year, the Supreme Court and the Federal Circuit issue many significant decisions impacting PTAB practice. The Appellate Year in Review, presented by the association’s Committee on Appeals from the PTAB, synthesizes the most important appellate decisions of the year and puts them into the context of the rapidly evolving PTAB practice.
The Appellate Year in Review is available to Members Only. To access it, please click here.
2021 Year-in-Review Executive Summary
At the Supreme Court
Administrative Patent Judges and the Constitution: Round 3 by William G. Jenks- In United States v. Arthrex, the Supreme Court held the Director may directly review any panel PTAB decision and, upon review, issue a new or revised decision.
- In Minerva Surgical v. Hologic, the Supreme Court upheld the doctrine of assignor estoppel but limited its application to scenarios where an assignor’s invalidity defense conflicts with a representation made when assigning the patent.
At the Federal Circuit
What is prior art and when must it be self-enabling? by Grace Tuyiringire and Melissa Brand- In Valve v. Ironburg Inventions, the Federal Circuit held that, as part of a document-authentication inquiry, the Board had an obligation to compare two documents itself to determine that they were in fact the same document.
- In Becton, Dickinson v. Baxter Corp. Englewood, the Federal Circuit held that a prior art patent did not cease being a “patent granted” for purposes of § 102(e) simply because all of its claims were cancelled in a previous IPR.
- In Raytheon Technologies v. General Electric, the Federal Circuit held that a prior art reference need not be self-enabling; however, there must still be evidence that a person of ordinary skill in the art could have made the claimed device.
- In cxLoyalty v. Maritz Holdings, the Federal Circuit found ineligible patent claims directed to a system for redeeming customer reward points.
- In two cases, both styled In re Board of Trustees of Leland Stanford Junior University, the Federal Circuit found ineligible patent claims directed to methods of haplotype phasing (a statistical process for determining the parent from which a version of a gene is inherited).
- In In re Vivint, the Federal Circuit held that the Patent Office has inherent authority to reconsider its prior decisions, and it acted arbitrarily and capriciously by not terminating an ex parte reexamination requested by a party whose previous IPR against the same patent was discretionarily denied under § 325(d).
- In Qualcomm v. Intel, the Federal Circuit held the PTAB may adopt its own claim constructions, but it cannot do so for a term that is not in dispute without first giving the parties notice and an opportunity to address the issues under that construction.
- In M&K Holdings v. Samsung Electronics, the Federal Circuit held that the PTAB cannot markedly deviate from a petitioner’s proposed ground of unpatentability, such as by holding a claim anticipated by one reference where the petitioner argued only obviousness over a combination of references.
- In Mobility Workx v. Unified Patents, the Federal Circuit held that there is no due process violation caused by the pay structure of administrative patent judges, the role of some APJs in administering the Patent Office’s budget, or the Director’s delegation of IPR institution authority to the same panel of judges that later write the final written decision.
- In Hyatt v. Hirshfeld, the Federal Circuit held that a patent applicant must avail itself of the Patent Office’s available patent prosecution processes in a way that avoids undue delay leading to prejudice to others.
- In Campbell Soup v. Gamon Plus, the Federal Circuit held that the standards for establishing a presumption of nexus, or a nexus-in-fact, between objective indicia of nonobviousness and patent claims are the same for design and utility patents.
- In In re Surgisil, the Federal Circuit held that the scope of a design claim does not broadly include a design in the abstract, but is limited to the particular article of manufacture identified in the claim.
- The author reviews the Federal Circuit’s recent spate of mandamus orders addressing district court transfer motions, and the interplay of venue with the PTAB’s evolving Fintiv discretionary denial considerations.
- In Uniloc 2017 v. Facebook, the Federal Circuit addressed the scope of 35 U.S.C. § 315(e) estoppel, holding that it applies to petitioners on a claim-by-claim basis.
- In SynQor v. Vicor, the Federal Circuit held that PTAB decisions in inter partes reexaminations have preclusive effect in subsequent reexaminations involving the same parties but a different patent.
- In New Vision Gaming & Dev. v. SG Gaming, the Federal Circuit vacated and remanded an IPR without addressing the central dispute of whether a forum selection clause in the parties’ license agreement barred the Patent Office from conducting the IPR.
- In In re Maxpower Semiconductor, the Federal Circuit denied a mandamus petition seeking to terminate an IPR, holding in part that the PTAB is not bound by a private contract between the parties that required arbitration of disputes.
- In Kannuu v. Samsung Electronics, the Federal Circuit held that an IPR is not a proceeding “arising out of” a non-disclosure agreement, and therefore an IPR is not barred by a forum selection clause in an NDA.
- In Apple v. Qualcomm, the Federal Circuit held that Apple’s decision to enter into a term-limited patent portfolio license, which covered the patent in dispute, robbed Apple of standing to appeal an IPR loss.
- In two cases styled ModernaTX v. Arbutus Biopharma, the Federal Circuit held the time for evaluating whether a IPR petitioner has standing to appeal is the date that it files a notice of appeal; the parties’ subsequent statements and actions do not confer standing.
- In ABS Global v. Cytonome/ST, the Federal Circuit held that a patentee’s abandonment of its infringement allegations could rob a IPR petitioner of standing to appeal.
- In Mojave Desert Holdings v. Crocs, the Federal Circuit held that the PTAB must allow a new patent owner to substitute into an IPR proceeding, even if the request is untimely.
- In Mylan Laboratories v. Janssen Pharmaceutica, the Federal Circuit held that the bar on appeals from institution decisions prevents the court from reviewing the merits of Fintiv discretionary denials, both directly and under mandamus review.
- In Uniloc 2017 v. Facebook, the Federal Circuit held that it could review a decision de-instituting an IPR because it was based on a estoppel-triggering event that occurred after institution.
- The author reviews recent Federal Circuit decisions addressing the written description requirement, including three pharmaceutical cases and four non-pharmaceutical cases.
- The author summarizes and analyzes statistics from 2021 on Federal Circuit appeals from the PTAB and their outcomes.
