December 2019

Totality of Circumstances for Determining Public Accessibility

Over the years, the Patent Trial & Appeal Board had become panel dependent in assessing questions of public accessibility at institution.  Some panels seemed to require a showing of a likelihood of public accessibility to move forward, while others  required a more definitive showing.  Last spring, the Precedential Opinion Panel (POP) took up this growing rift in institution standards in Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039. Specifically,  the  POP addressed the requirements for establishing that a reference qualifies as a printed publication at the time of institution.

In its now precedential decision, the Board found that a more flexible approach was needed at institution.
Continue Reading PTAB POP Recalibrates Institution Analysis for Public Accessibility

CAFC Faults PTAB Nexus Presumption

A proper obviousness analysis under Graham v. John Deere analyzes four factors: (1) the scope and content of the prior art; (2) the differences between the prior art and the patent claims; (3) the level of ordinary skill in the art; and (4) secondary considerations or “objective indicia” of non-obviousness. Yet, objective indicia arguments are relatively uncommon in the predictable arts.  And even when they are advanced, the argument is rarely effective. This is because establishing  a nexus between a patent claim and such amorphous concepts as “commercial success” (the most commonly advanced form of indicia) is a far more complex undertaking than most practitioners appreciate.

A patentee is entitled to a rebuttable presumption of nexus between its asserted objective indicia and a patent claim if the patentee shows that the indicia is tied to a specific product and that the product is the invention disclosed and claimed.  Earlier this week, the Federal Circuit analyzed how close a claim needs to be to the purported “invention” to qualify for the presumption of nexus.
Continue Reading Critical Aspects of Invention Need to Be Claimed for Secondary Indicia to Stick

Gov’t Questions Fundamental Aspects of Court Decision

As promised, the government has now sought en banc rehearing in Arthrex. In its petition, the government revisits the bases for the Court’s October decision and encourages the Court to also grant rehearing in the Polaris dispute so that the court might address forfeiture in Arthrex and reach the remaining issues in Polaris (which is distinguished in the petition as having seasonably argued the issue before the agency)

I think it is safe to predict the CAFC takes this one up.Continue Reading En Banc CAFC to Debate PTAB Appointments Clause Issue

SCOTUS to Recalibrate Appeal Bar

Earlier this week the SCOTUS heard arguments in Dex Media Inc. v. Click-To-Call Technologies, LP. As a reminder, the issue presented was the scope of the appeal bar of 35 U.S.C. § 314(d) for AIA Trial Proceedings.  More particularly, whether disputed violations of 35 U.S.C. § 315(b) are barred from appeal.

The court initially addressed the appeal bar in Cuozzo, commenting that the appeal bar would not preclude all appeals, such as “shenanigans” where the agency exceeds its statutory bounds. The Court addressed the bar again,
Continue Reading PTAB Appeal Bar Likely to Be Tightened

Motion to Amend Practice

For those interested in motion to amend practice in AIA trials, the Patent Trial & Appeal Board (PTAB) will be conducting a webinar on the topic this Wednesday, December 4th from noon to 1PM (EST) (here)

Deputy Chief Judge Jackie Bonilla and Lead Judge Jessica Kaiser will address a…