Patent Trial & Appeal Board Archives - Page 7 of 24

Patent Trial & Appeal Board

Claim Duality: Multiple Dependent Claims Can Be Both Patentable and Unpatentable

by Tim Dunker | Mar 9, 2023 | Patents

Addressing, for the first time, the issue of patentability of multiple dependent claims under 35 U.S.C. § 112, fifth paragraph, the Director of the US Patent & Trademark Office (PTO) granted rehearing and modified the Patent Trial & Appeal Board’s (Board) Final Written Decision after finding that the patentability of a multiple dependent claim should be considered separately as to each of the claims from which it depends. Nested Bean, Inc. v. Big Beings US Pty. Ltd. et al., IPR2020-01234 (PTO Feb. 24, 2023) (Vidal, Dir.) (precedential).

Nested filed a petition for inter partes review challenging claims 1 through 18 of a patent owned by Big Beings. Claims 1 and 2 were independent, and claims 3 to 16 were multiple dependent claims, which depended directly from either claim 1 or 2. The Board granted institution and ultimately issued a Final Written Decision finding that Nested did not establish that claims 1, 17 and 18 were unpatentable, but that Nested had established that claims 2 through 16 were unpatentable.

Big Beings filed a Request for Director review, noting that each of claims 3 to 16 were multiple dependent claims that depended from both claims 1 and 2. Big Beings argued that because the Board found that Nested failed to show that claim 1 was unpatentable, the Board should have also found that Nested failed to show that claims 3 through 16, as depending from claim 1, were unpatentable. The Director granted review.

35 U.S.C. § 112, fifth paragraph, states, in relevant part, “[a] multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.” Big Beings argued that the statute requires the Board to separately consider the patentability of alternative dependencies of a multiple dependent claim. Nested responded by arguing that the statute should be read so that if any version of a multiple dependent claim is found unpatentable over the prior art, then all versions of the claim should be found unpatentable.

The Director found that this was an issue of first impression. Relying on 37 C.F.R. § 1.75(c) and 35 U.S.C. § 282, the Director concluded that “a multiple dependent claim is the equivalent of several single dependent claims. Thus, in the same way that the unpatentability of multiple single dependent claims would each rise or fall separately, so too should the dependent claims covered by a multiple dependent claim.” The Director also noted that the Federal Circuit in Dow Chemical and Dayco Products explained that “not addressing claim validity on an individual basis is an error and contravenes 35 U.S.C. 282[.]” The PTO Director concluded, quoting the Manual of Patent Examining Procedure (MPEP), that “a multiple dependent claim must be considered in the same manner as a plurality of single dependent claims.”

Compelling Clarity: PTO Director Explains Compelling Merits Test

by Alexander Piala, PhD | Mar 9, 2023 | Patents

US Patent & Trademark Office (PTO) Director Katherine K. Vidal issued a precedential opinion clarifying the standard under which the Patent Trial & Appeal Board (Board) can institute on an inter partes review (IPR) petition despite the Fintiv factors militating toward denial. CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242 (PTO Feb. 27, 2023) (Vidal, Dir.) (precedential).

This opinion follows the Director’s Interim Procedure for Discretionary Denials memorandum (Guidance Memo) and her opinion in OpenSky Indus. v. VLSI Tech. In the guidance memo, the Director explained that when there is “compelling evidence of unpatentability,” the Board may decline to exercise its discretion to deny IPR institution.

In this case, Dali Wireless sued CommScope in the district court, alleging infringement of its patent. CommScope filed a petition to institute an IPR proceeding against the asserted patent. The Board granted the petition and instituted an IPR proceeding while the district court litigation was ongoing.

In granting the petition, the Board acknowledged that it would normally perform a Fintiv analysis to determine whether it should deny the petition in light of the parallel district court proceeding. However, considering the Guidance Memo and the “compelling invalidity challenge” presented by the petitioner, the Board skipped the Fintiv analysis and instituted on the petition. The Director instituted sua sponte review.

Recognizing some ambiguity in both OpenSky and the guidance memo, the Director made her decision precedential to clarify:

My Guidance Memo states that “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability.” Although I now recognize that this instruction could be read to allow for a compelling merits determination as a substitute for a Fintiv analysis, that was not my intent. By that instruction, I intended for PTAB panels to only consider compelling merits if they first determined that Fintiv factors 1–5 favored a discretionary denial . . . . In circumstances where . . . the Board’s analysis of Fintiv factors 1–5 favors denial of institution; the Board shall then assess compelling merits. In doing so, the Board must provide reasoning sufficient to allow the parties to challenge that finding and sufficient to allow for review of the Board’s decision.

A determination of whether the petition presents a compelling merits case for invalidity requires a merits case that meets a higher standard than the “reasonable likelihood” test required by 35 U.S.C. § 314(a).

The Director found that the Board’s decision was deficient in both parts of the analysis. The Board did not perform any analysis of the Fintiv factors but instead went straight to a determination of whether the petition presented a compelling invalidity challenge. In connection with that determination, the Board failed to provide any reasoning that explained why it found the merits case presented in the petition compelling.

Finding that the Board’s reasoning was conclusory, the Director vacated the Board’s decision to institute IPR review and remanded for further proceedings consistent with her decision.

Practice Note: Less [...]

Continue Reading

Little Weight Given to Conclusory Expert Declaration That Repeats IPR Petition Verbatim

by Amol Parikh | Mar 2, 2023 | Patents

The US Patent & Trademark Office Director affirmed and designated as precedential a Patent Trial & Appeal Board (Board) decision denying institution of an inter partes review (IPR) petition where the expert declaration presented conclusory assertions without underlying factual support and repeated verbatim the petitioner’s argument. Xerox Corp. v. Bytemark, Inc., IPR2022-00624 (PTAB Aug. 24, 2022) (Wood, Grossman, Tartal, APJs); Xerox Corp. v. Bytemark, Inc., IPR2022-00624 (Feb 10, 2023) (Vidal, Dir.)

Bytemark owns a patent directed to a method and system for distributing electronic tickets. According to the patent, a user can procure and store an electronic ticket on a device such as a mobile phone, and when the user presents the ticket, the ticket taker can verify the ticket by inspecting a visual object that a human can perceive without a machine scan. In addition to using a validating visual object, the patent teaches data integrity checking to ensure that the ticket data and the software managing that ticket data on the user’s device has not been altered improperly. As to the data integrity concept, the claims of the patent recite a server that is configured to “store in a data record associated with the user account a data value indicating the fraudulent activity” (fraud limitation).

Xerox filed an IPR petition challenging certain claims of the patent as obvious over the Terrell prior art reference in combination with various secondary references. Xerox argued that Terrell disclosed that after fraudulent activity is detected, “the purchaser of the ticket could be blocked from further use of the system or pursued in respect of their potential fraud.” Xerox asserted that a skilled artisan would understand that such blocking would require recording the blocking in a data record associated with that user’s account, and would find it obvious that blocking the account of the purchaser from further use of the system would include storing a data value indicating the fraudulent activity in a data record associated with the user account.

Bytemark responded that Terrell, at most, taught blocking a ticket purchaser from further use of the Terrell system based on potential fraud, but nowhere indicated that this would be achieved by using a data value indicating fraudulent activity, as opposed to some other manner of blocking a user, such as deleting the user’s account or reporting the user for fraud. Bytemark further argued that Xerox’s argument that a skilled artisan would find the fraud limitation obvious was conclusory and an improper attempt to use a skilled artisan’s common knowledge to supply a wholly missing claim limitation without evidentiary support.

The Board agreed with Bytemark, finding that Xerox did not provide sufficient evidence or persuasive reasoning to support either of Xerox’s arguments. The Board explained that Terrell taught blocking the purchaser rather than the account of the purchaser and that it was far from clear that blocking the purchaser would “require” recording the blocking in a record in the purchaser’s account, as opposed to deleting the purchaser’s account altogether. The Board noted that the [...]

Continue Reading

Review Delayed Is Not Review Denied

by Christopher M. Bruno | Feb 16, 2023 | America Invents Act, Patents

Considering whether the US Patent & Trademark Office (PTO) Director must complete review of the Patent Trial & Appeal Board’s (Board) inter partes review (IPR) decision within the statutory deadline for a final written decision, the US Court of Appeals for the Federal Circuit concluded that the statute imposes no such requirement. CyWee Group Ltd. v. Google LLC et al., Case Nos. 20-1565, -1567 (Fed. Cir. Feb. 8, 2023) (Prost, Taranto, Chen, JJ.).

In 2018, Google filed two IPR petitions challenging certain claims of CyWee’s patents. The Board issued its final written decisions in January 2020, determining that all challenged claims were unpatentable for obviousness. CyWee appealed to the Federal Circuit in March 2020. In addition to challenging the patentability decision, CyWee challenged the appointment of Board administrative patent judges (APJs) as unconstitutional in view of the Appointments Clause. In March 2021, the Court affirmed the Board’s decisions and rejected CyWee’s constitutional challenge. The Court issued its mandate on June 10, 2020.

Eleven days later, the Supreme Court of the United States issued its decision in United States v. Arthrex, Inc., holding that APJs’ power to render final patentability decisions unreviewable by an accountable principal officer gave rise to an Appointments Clause violation but this violation could be remedied by, among other things, remanding to the acting PTO Director to decide to rehear the case. In response to a request from CyWee, the Federal Circuit recalled the mandate and remanded “for the limited purpose of allowing CyWee the opportunity to request Director rehearing of the final written decisions,” and required CyWee to inform the Court within 14 days of any decision denying rehearing. On remand, the Commissioner for Patents denied rehearing and ordered that the already-issued final written decisions were final decisions of the PTO. CyWee appealed.

CyWee contended that the post-Arthrex, mandated review by the PTO Director was untimely—and thus violative of due process—because the PTO Director did not have the ability to review the institution decision and final written decision within their respective three-month and one-year statutory deadlines. The Federal Circuit disagreed, calling CyWee’s contentions “meritless.” Rather, the Court found that because the PTO Director had permissibly delegated to the Commissioner for Patents authority to render institution and final decisions to the Board, those decisions were timely so long as the PTO Director’s delegees rendered them within the statutorily prescribed periods. By contrast, the PTO Director’s final review authority—a constitutional necessity born from Arthrex—has no similar statutory deadline.

CyWee also argued that the PTO Director’s later review was too late to satisfy a general requirement that the PTO Director consider the effect of regulations on the PTO’s ability to timely complete instituted IPRs. The Federal Circuit rejected this argument too, finding that even if the statute imposed a general timeliness requirement that was subject to judicial review, nothing about the process afforded to CyWee would have violated such a requirement.

With a different spin on the timeliness issue, CyWee also argued that the Board’s extension [...]

Continue Reading

KSR Does Not Extend to Design Patents (Yet)

by Courtney Seams | Feb 9, 2023 | Patents

Addressing the standard for obviousness of design patents, the US Court of Appeals for the Federal Circuit, in a per curiam opinion, upheld the Patent Trial & Appeal Board’s finding that a challenged design patent was not obvious over the pre-KSR design patent obviousness test or anticipated. LKQ Corporation v. GM Global Technology Operations, Case No. 21-2348 (Fed. Cir. Jan. 20, 2023) (per curiam) (Lourie, J., concurring) (Stark, J., concurring).

GM owns a design patent for the fender of a vehicle. LKQ Corp. previously held a license to the patent from GM, but negotiations to renew the license failed. Because LKQ continued to manufacture the fender after the expiration of the license, GM sent LKQ notice that it was infringing the patent. In response, LKQ petitioned for an inter partes review against GM, alleging that the patent was obvious and/or anticipated.

The Board found that LKQ had not presented enough evidence to prove that the patent was obvious or anticipated. For purposes of evaluating the obviousness of the design over prior art, the Board defined ordinary observers as “retail consumers who purchase replacement fenders and commercial replacement part buyers.” The Board concluded that, from the perspective of the ordinary observer, there were multiple differences between the patented design and the key reference, a prior art design patent. LKQ appealed.

LKQ argued that the Board erred in finding that there was no anticipation and in applying the obviousness tests of In re Rosen (C.C.P.A. 1982) and Durling v. Spectrum Furniture (Fed. Cir. 1996) because the Supreme Court of the United States overruled those tests in KSR International v. Telflex (2007).

The Federal Circuit upheld the Board’s definition of the ordinary observer. The Court found that retail purchasers of the entire vehicle would not be included in the ordinary observer group because purchasers of the product embodying the design are interested in the part itself, not the vehicle as a whole. The Court went on to uphold the Board’s application of the ordinary observer obviousness test, agreeing that the patented design created different overall impressions from the prior art for purposes of both obviousness and anticipation.

The Federal Circuit then addressed whether KSR overruled the Durling and Rosen tests for obviousness of design patents. The Court found that LKQ properly preserved the argument for appeal by asserting it in its opening brief to the Board. The Court then found that it was unclear whether the Supreme Court overruled Durling and Rosen, and therefore the Court was bound to apply the existing law. In applying the Durling and Rosen tests, the Court found that LKQ had failed to identify “the correct visual impression created by the patented design as a whole” because the prior art patent lacked certain key design features of the patented design. Thus, the Court affirmed the Board’s finding that the patent was not obvious.

Judge Lourie provided an additional opinion and addressed LKQ’s argument that KSR overruled Rosen. Lourie stated that because KSR did not involve design patents, which [...]

Continue Reading

Absent Expressed Rationale of Obviousness, Federal Circuit Calls for Do-Over

by Anisa Noorassa | Jan 19, 2023 | Patents

The US Court of Appeals for the Federal Circuit reversed a ruling by the Patent Trial & Appeal Board (Board) where, on appeal, the US Patent & Trademark Office’s (PTO) rationale for sustaining the Board’s obviousness rejection did not reflect “the reasoning or findings the Board actually invoked.” In Re Google, LLC, Case No. 22-1012 (Fed. Cir. Jan. 9, 2023) (Moore, C.J., Lourie, Prost, JJ.)

Google’s patent application covers a method of filtering search results to display age-appropriate results using a “content rating score” in combination with a predetermined threshold value to determine which results will be presented. The application discloses several ways that the threshold value can be calculated, including using the length of the search query as a proxy for the age of the user, with longer queries being associated with older users and leading to a lower threshold score (allowing more mature content to be shown).

The application received a final rejection from the examiner, who asserted that the claims would have been obvious under 35 U.S.C. § 103 based on two prior art references, Parthasarathy and Rose. Parthasarathy disclosed a method to determine a content score to use for ranking results, while Rose disclosed a method to assign result importance based on query length. The examiner argued that it would be obvious to combine Rose and Parthasarathy to achieve the claimed method that recited a “predetermined threshold value” based on the number of words in a query. The examiner acknowledged that Parthasarathy did not disclose a threshold based on a number of words but found that Rose did, citing Rose’s modified relevance-ranking algorithm. He reasoned that it would have been obvious to combine Rose and Parthasarathy to achieve the claimed threshold because “analyzing a query for determining the query length and using the query length as a threshold is very well known in the art and doing so would further provide for assigning weight to a long or a short query for retrieving documents.” Google appealed the examiner’s decision to the Board, which affirmed the examiner’s rejection and adopted the examiner’s findings. Google appealed to the Federal Circuit.

On appeal, the PTO argued that because there were only two ways a person of ordinary skill in the art could modify Parthasarathy’s threshold to incorporate Rose, either of the modifications would have been obvious. However, the Federal Circuit found that this argument was not supported by the Board’s decision. The Court explained that while the Board did conclude that modifying Parthasarathy’s threshold to take into account the length of the query would have been obvious, the Board did not provide any detail as to how that would be achieved. In the absence of specific fact-based findings by the Board, the Court explained that it could not adopt the PTO’s argument, which rested on facts not found in the Board’s decision. A ruling relying on these facts would have resulted in a violation of basic administrative law principles since a court may only uphold an agency action on [...]

Continue Reading

Swing and a Miss: Failed Interferences Don’t Affect Later Ones

by Mike Baldwin | Jan 19, 2023 | Patents

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s (Board) interference decision finding that priority belonged to the junior party based on sufficiently corroborated reduction to practice. Dionex Softron GmbH v. Agilent Technologies Inc., Case No. 21-2372 (Fed. Cir. Jan. 6, 2023) (Reyna, Chen, Stark, JJ.)

Both parties attempted to instigate an interference by copying each other’s claims regarding a method of operating a liquid chromatography system. Agilent first substantially copied Dionex’s claims but failed to secure declaration of an interference and subsequently amended its claims. Dionex then copied verbatim Agilent’s amended claims, successfully provoking an interference. The Board identified Dionex as the senior party and Agilent as the junior, placing the burden for priority on Agilent.

At the interference, Dionex moved for judgment based on lack of written description for the relevant count language (emphasis added):

. . . determining a movement amount of the piston within the chamber from a first position to a second position to increase a pressure in the sample loop from an essentially atmospheric pressure to the pump pressure, based on the pump pressure […] wherein decreasing the volume includes forwarding the piston within the chamber by the determined movement amount from the first position to the second position.

Dionex contended that Agilent’s specification lacked written description for “determining a movement amount” and subsequently “forwarding the piston,” wherein the order of those two separate operations was important and lacking support. Dionex also contended that while the relevant specification was Dionex’s patent for a majority of count terms, some terms, such as “determining,” should be viewed in light of Agilent’s application. The Board disagreed and found that Agilent’s specification was controlling and contained adequate written description to support the count.

In finding Agilent’s written description adequate, the Board rejected Dionex’s contention that the claims required a determination of movement amount before forwarding the piston. Applying the broadest reasonable interpretation standard, the Board found that the count language permitted determination of movement amount while forwarding the piston and that consequently there was adequate support in the specification.

Both parties moved for judgment on priority. The Board granted Agilent’s motion, finding that even as the junior party, Agilent proved conception and reduction to practice before Dionex’s earliest conception date. Applying the rule of reason, the Board found that the testimony of one of Agilent’s co-inventors was sufficiently corroborated by two coworkers to show successful reduction to practice by the critical date. The Board also credited Agilent’s coworker testimony in denying Dionex’s contention that Agilent’s reduction to practice lacked a pressure senor and credited testimony stating that a high-pressure pump with a built-in pressure system was used. The Board also declined Dionex’s request to draw a negative inference from the lack of testimony of the other co-inventor, crediting Agilent’s explanation that the testimony would have been cumulative. Dionex appealed.

On appeal, the Federal Circuit found that the Board had correctly treated Agilent’s specification as the “originating specification” because it was Dionex’s [...]

Continue Reading

Bad Connection: Claim Construction Argument without Explanation Given No Weight

by Cecilia Choy, Ph.D. | Dec 22, 2022 | Patents

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) obviousness decision after finding that the patent owner failed to explain how its cited extrinsic evidence supported its proposed claim construction. Uniloc 2017 LLC v. Netflix, Inc., Case No. 21-2085 (Fed. Cir. Dec. 15, 2022) (Dyk, Taranto, Hughes, JJ.) (nonprecedential).

Uniloc owns a patent directed to a “more efficient” method for encoding videos by only coding at the pixel level when necessary and, where possible, reusing code for macroblocks in the background area. Netflix petitioned for inter partes review of several claims in Uniloc’s patent. The Board ultimately found the claims unpatentable as obvious. Uniloc appealed.

Uniloc argued that the Board erred in its claim construction of a limitation that required “dividing the stationary background region and the object region from an inputted video in a macroblock-by-macroblock basis by using a difference between the previous frame and the current frame.” The dispute before the Federal Circuit was whether the “macroblock-by-macroblock basis” required that the act of dividing be done macroblock-by-macroblock, as urged by Uniloc, or whether the dividing resulted in separate macroblock-based regions, as urged by Netflix and found by the Board. The Court concluded that Netflix and the Board were correct.

The Federal Circuit first addressed the intrinsic record, finding that it was ambiguous as to the meaning of “macroblock-by-macroblock basis.” Although the claim language supported either interpretation, Uniloc’s argument would require the Court to read language into the claim that was “simply not there.” The specification did not clarify the claim construction issue either. Although Uniloc pointed to one example where the dividing step occurred one macroblock at a time, the Court stated that it did not limit claim language to examples used in the specification. Lastly, the Court explained that the portions of the specification describing the purpose of the invention and avoiding problems in the prior art also failed to clarify the meaning of the macroblock-by-macroblock basis. Because the purpose was merely to make coding more efficient and avoid dividing at the pixel level, either interpretation could apply.

Relatedly, the Federal Circuit rejected Netflix’s argument that Uniloc forfeited the arguments on appeal related to the portions of the specification explaining the purpose of the claimed invention and how it purportedly solved problems in the prior art. The Court explained that the forfeiture doctrine does not “preclude a party from proffering additional or new supporting arguments, based on evidence record, for its claim construction.” Here, Uniloc “merely cited additional support in the specification to support the same argument it had always made” related to the macroblock-by-macroblock basis.

The Federal Circuit next addressed the extrinsic evidence and agreed with the Board’s decision that a “macroblock-by-macroblock basis” required dividing results in separate macroblock-based regions. Uniloc’s only extrinsic evidence was a dictionary definition of “basis,” and Uniloc offered no additional expert evidence to explain technological facts or usage in the field that would support its interpretation. In contrast, Netflix provided expert testimony and [...]

Continue Reading

Applying Collateral Estoppel in IPRs

by Alexandra Cavazos, PhD | Dec 15, 2022 | Patents

The US Court of Appeals for the Federal Circuit considered whether a dependent claim invalidated by collateral estoppel also invalidates its parental independent claim. Google LLC v. Hammond Devel. Int’l, Inc., Case No. 21-2218 (Fed. Cir. Dec. 8, 2022) (Moore, C.J.; Chen, Stoll, JJ.)

The dispute began when Hammond Development sued Google, alleging that Google infringed several of Hammond’s patents on automated voice response systems. In response, Google filed multiple inter partes reviews (IPRs), one of which targeted Hammond’s ’483 patent. In that proceeding, the Patent Trial & Appeal Board (Board) held that all claims of the ’483 patent were obvious. Hammond did not appeal the decision in this IPR, which then became final, but only after Google filed an IPR against another of Hammond’s patents—the ’816 patent. The ’816 and ’483 patents are in the same family and share the same specification. In the later-filed IPR, the Board found claims 14 through 19 of the ’816 patent nonobvious and patentable. Google appealed.

Claim 14 is an independent claim and claim 18 depends from it. The parties agreed that the patentability of both claims rose and fell together. On appeal to the Federal Circuit, Google argued that claim 18 was invalid under the doctrine of collateral estoppel based on the prior art that rendered claim 18 of the ’483 patent invalid.

A party seeking to invoke collateral estoppel must show the following:

The issue is identical to one decided in the first action.
The issue was actually litigated in the first action.
Resolution of the issue was essential to a final judgment in the first action.
The party against whom collateral estoppel is being asserted had a full and fair opportunity to litigate the issue in the first action.

Because the parties had agreed that all but the first of the elements of collateral estoppel were met, collateral estoppel would apply if the issues of patentability were identical between the adjudicated and unadjudicated claims. The Federal Circuit found that slight differences in the claim language of the involved patents were immaterial because they related only to the number of application servers, and Google’s expert had credibly testified that distributing software applications across multiple servers was well known in the art and obvious. Hammond did not mount a substantive challenge to the expert evidence. As the Court noted, “collateral estoppel may apply even if the patent claims ‘use slightly different language to describe substantially the same invention,’ so long as ‘the differences between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity.’”

Google also attacked the validity of independent claim 14 of the ’816 patent. Although Google’s attack against claim 14 was based on a different combination of references (as compared to claim 18), the Federal Circuit apparently applied collateral estoppel to find claim 14 invalid as well, citing an agreement between the parties that “if claim 18 is unpatentable, then independent claim 14 is as well.”

Finally, Google argued that dependent [...]

Continue Reading

No Mulligans Here: PTO Rewinds Reexamination Based on Estoppel

by James M. Oehler | Dec 8, 2022 | Patents

The US Patent & Trademark Office (PTO) terminated a pending ex parte reexamination after finding that the challenger was estopped because the prior art references could have been raised in a prior inter partes review (IPR). In re Tyler, Reexam. No. 90/014,950 (PTO Nov. 15, 2022).

In 2017, GITS Manufacturing filed two IPR petitions against a patent owned by G.W. Lisk after Lisk asserted the patent against GITS in district court. In 2018, the Patent Trial & Appeal Board issued final written decisions in each IPR, finding some claims unpatentable and maintaining the patentability of other claims. The Federal Circuit affirmed both IPR decisions in 2021.

In February 2022, the PTO initiated an ex parte reexamination of one of the patents based on a request filed by GITS. The reexamination proposed multiple grounds of unpatentability based on four prior art references that were not involved in the IPRs. GITS included a lengthy discussion and an expert declaration describing the prior art searches GITS performed in support of the certification that it was not estopped under 35 U.S.C. § 315(e)(l) from asserting the grounds in the reexamination. Lisk filed a petition to vacate the reexamination proceeding, alleging that GITS was estopped because the reexamination references reasonably could have been raised in the previous IPRs. Lisk’s petition was supported by its own expert declaration describing prior art searches that a skilled searcher would have conducted.

A party is estopped under § 315(e)(1) from requesting a reexamination proceeding based on grounds that the party “raised or reasonably could have raised” during an IPR. The legislative history of § 315(e) defines “reasonably could have raised” as “prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover.” The PTO cited legislative history stating that “reasonably could have raised” does not require a “scorched-earth search,” leaving open the possibility that a diligent search may not discover a particular reference. But the PTO also distinguished the search an examiner or lawyer may conduct from the more robust search that a skilled searcher is assumed to conduct prior to filing a petition for a IPR proceeding.

The PTO evaluated each of the four references in GITS’s reexamination grounds based on the criteria described above. Two of the references were patent documents available in commercial databases that a skilled searcher could be expected to find. The third reference was a “seminal textbook” that GITS itself stated was used in the field to train those of skill in the art. The textbook reference was also found through standard citation searching of the patent at issue. The fourth reference was provided by a publisher that GITS stated “was an established publisher that was well known to those interested in the field,” and which maintained an online searchable database of its publications. The PTO determined that the fourth reference would have been found by a reasonably diligent search, despite the fact that a subscription fee was required to search the database.

The PTO also weighed [...]

Continue Reading

Older Posts »

« Newer Posts

BLOG EDITORS

Paul Devinsky

Amol Parikh

BLOG EDITORS

STAY CONNECTED

TOPICS

ARCHIVES

RECENT POSTS