Federal Circuit Rules that PTAB Time-Bar Determinations in IPRs Can Be Appealed*

(*Originally published as a Michael Best client alert on January 10, 2018, co-authored by J. Donald Best and Kenneth M. Albridge, III)

On January 8, 2018, in Wi-Fi One, LLC v. Broadcom Corp., the United States Court of Appeals for the Federal Circuit issued an en banc decision expanding the range of issues subject to judicial review on appeal from decisions of the Patent Trial and Appeal Board (PTAB) in inter partes review (IPR) proceedings. In a 9-4 decision, the full Federal Circuit overruled its prior panel decision in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) and held for the first time that the PTAB’s time-bar determinations under 35 U.S.C. § 315(b) are not exempt from judicial review under § 314(d). Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1944, slip op. at 21 (Fed. Cir. Jan. 8, 2018). Continue reading

Federal Circuit Remands Patents Back to Board for Further Proceedings Regarding Challenges to Patents’ Validity Based on Anticipation and Obviousness

In a nonprecedential decision, the Federal Circuit ruled that the Patent Trial and Appeal Board had (1) failed to address a specific anticipation argument raised by a petitioner and (2) failed to provide adequate reasoning to support a decision on obviousness. Continue reading

District Court Judgment of Invalidity Overturned Based on Flawed Analysis of Claim Definiteness Under 35 U.S.C. § 112

In 2014, the Supreme Court issued its decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), rejecting the Federal Circuit’s “insolubly ambiguous” standard for determining compliance with the definiteness requirement under 35 U.S.C. § 112. Criticizing that standard as leaving “courts and the patent bar at sea without a reliable compass,” the Supreme Court held that a patent is indefinite and invalid if the “patent’s claims, read in light of the specification and the prosecution history fail to inform with reasonable certainty those skilled in the art about the scope of the invention.” Nautilus, Inc., 134 S. Ct. at 2124, 2129-30. On November 20, 2017, the Federal Circuit issued a precedential decision on indefiniteness, adding to its growing jurisprudence applying the Supreme Court’s decision in Nautilus. Continue reading

Federal Circuit Declares TC Heartland Changed Patent Venue Law

A recent Federal Circuit decision may give further hope to some accused infringers still looking to transfer venue in the wake of the Supreme Court’s TC Heartland decision. On November 15, 2017, a Federal Circuit panel vacated the U.S. District Court for the District of Massachusetts’ denial of Micron’s motion to dismiss or transfer and declared that TC Heartland was a change in the law. In re: Micron Tech., Inc., No. 2017-138 (Fed. Cir. Nov. 15, 2017) (precedential). Continue reading

Federal Circuit Upholds Finding of Induced Infringement Based on Drug’s Label Instructions

In Sanofi v. Watson Laboratories et al., the Federal Circuit affirmed the United States District Court for the District of Delaware’s ruling that the defendants’ sale of their proposed generic drugs would induce infringement by physicians, as well as the district court’s rejection of the defendants’ obviousness arguments and finding of direct infringement by both defendants. Nos. 2016-2722, 2016-2726, slip op. at 3 (Fed. Cir. Nov. 9, 2017). The patents-in-suit related to a heart rhythm medication, sold as Multaq® by Sanofi. Id. at 2. Continue reading

Eyes on Alice: Federal Circuit Affirms Decision to Strike Claims of Four Patents Related to Streaming Data Over the Internet as Unpatentable Subject Matter

The Federal Circuit issued another precedential decision adding to its line of cases delineating between patent-eligible and patent-ineligible improvements in computer-related technology. On November 1, 2017, the Federal Circuit issued a decision concluding that four patents related to a system for streaming audio/visual data over a communications system like the internet are directed to patent ineligible subject matter under 35 U.S.C. § 101.

In Two-Way Media Ltd. v. Comcast Cable Communications, LLC, the Federal Circuit affirmed the United States District Court for the District of Delaware’s ruling granting defendants’ motion for judgment on the pleadings under Federal Rule of Civil Procedure 12(c) based on patents being ineligible under § 101. Nos. 2016-2531, 2016-2532, slip op. at 7, 9 (Fed. Cir. Nov. 1, 2017). The patents-in-suit were entitled “Multicasting Method and Apparatus” and described a system to provide a way to transmit one packet of information to multiple recipients. Id. at 3. More specifically, “[t]he patents describe the invention as an improved scalable architecture for delivering real-time information.” Id. Continue reading

Federal Circuit Affirms District Court Obviousness Determination and Routine-Experimentation Rationale

Under 35 U.S.C. § 103, patentability of an invention is not to be negated by the manner in which the invention was made. This provision, according to past Federal Circuit decisions, “was enacted to ensure that routine experimentation does not necessarily preclude patentability.” Honeywell Int’l Inc. v. Mexichem Amanco Holdings S.A. DE C.V., 865 F.3d 1348, 1356 (Fed. Cir. 2017). Nevertheless, in certain cases, the Federal Circuit has considered routine experimentation or testing as a reason to invalidate a patent.  On October 26, 2017, in Merck Sharp & Dohme Corp. v. Hospira, Inc., the Federal Circuit did so again. Continue reading