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Denying a Stay and Building an Airplane While Flying It

By Sandip H. Patel

September 24, 2020

A decision to stay patent infringement litigation falls within a federal court’s power to control its docket. But in determining whether to stay litigation pending the Patent Office’s inter partes review (IPR) of the patent, courts still are guided by three factors: (1) whether the stay will simplify the litigation, (2) whether a stay would unduly prejudice (or present a clear tactical disadvantage to) the patent owner, and (3) whether the litigation has progressed to some advanced stage…

PTABWatch

Fitbit Dodges a Bullet—Entitled to Appeal Portion of Apple’s Petition Which It Did Not Join

By Thomas L. Duston

September 10, 2020

In Fitbit, Inc. v. Valencell, Inc., Appeal 2019-1048 (Fed. Cir. July 8, 2020), the Federal Circuit determined that Fitbit, who had successfully sought joinder in an IPR petition filed by Apple, had standing to appeal an adverse determination as to certain patent claims, despite Fitbit’s failure to join that portion of Apple’s Petition. The Federal Circuit went on to rule that the PTAB had erred in rejecting Apple’s arguments as to those claim, and…

PTABWatch

Raiders of the Lost Art

By Ryan J. Schermerhorn

August 18, 2020

In Telefonaktiebolaget LM Ericsson, (“Ericsson”), v TCL Corporation, (“TCL”), 2017-2381, -2385 (Fed. Cir. Nov. 7, 2019), the Federal Circuit affirmed the PTAB’s decision that canceled claims in an Ericsson patent that TCL challenged based on its subsidiary finding that a German journal article TCL presented was indeed prior art. The decision is important because it offers guidance in assessing what type of evidence may be persuasive in a PTAB’s assessment of the public accessibility…

PTABWatch

Does Section 285 Permit an Award of Attorney’s Fees for Patent Office Proceedings?

By Sandip H. Patel

July 27, 2020

Back in 1988, the Federal Circuit reversed a district court decision that refused to award a party its reasonable attorney’s fees incurred in successfully litigating a patent’s validity before the Patent Office. PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565 (Fed. Cir. 1988). The Office determined that the patent asserted in litigation—stayed pending the Office’s review—was invalid and obtained through inequitable conduct. Nobody contested the district court’s conclusion that the case…

PTABWatch

Incorporating Entire Arguments by Reference Can Lead to Disastrous Outcomes

By John J. Lucas

July 20, 2020

In General Access Solutions, Ltd. v. Sprint Spectrum L.P., Case No. 19-1856 (Fed. Cir. May 11, 2020) (non-precedential), General Access Solutions (“GAS”) appealed from two final written decisions of the Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”) proceeding holding that multiple claims of U.S. Patent Nos. 7,173,916 and 6,891,810 were obvious over prior art cited by Sprint Spectrum L.P. (“Sprint”). Specifically, the Board found certain claims to be…

PTABWatch

Fast-Track Decisions on Ex Parte Appeals

By Sandip H. Patel

July 8, 2020

On July 2, 2020, the Patent Office initiated the “Fast-Track Appeals Pilot Program,” which it designed to reduce the pendency of ex parte appeals. The program, effective for one year, is in a pilot stage to gauge the public’s interest and to assess its longer-term feasibility. The Office neither expects nor intends any delays for appeals that forego the pilot program. So, for now, participation in the program is first come, first served, limited to…

PTABWatch

PTAB’s Obviousness Analysis Inconsistent with KSR

By Julianne M. Hartzell

June 18, 2020

In a decision issued on May 5, 2020, the Federal Circuit reversed a PTAB decision upholding patent claims challenged for obviousness. Uber Technologies, Inc. v. X One, Inc., 957 F.3d 1334 (Fed. Cir. 2020). The Board failed to properly apply the obviousness test of KSR International Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), which recognized that a person of skill in the art has good reason to pursue the use of a…

PTABWatch

Patent Invalidated Despite Owner’s Argument Reinstated On Appeal

By John J. Lucas

June 11, 2020

In The Chamberlain Group, Inc. v. One World Techs., Inc., Case 18-2112 (Fed. Cir. Dec. 17, 2019), the Federal Circuit held the USPTO erred in determining that Chamberlain raised a new argument during the Board’s final hearing. There, Chamberlain argued that the prior art did not anticipate certain claims of the patent. The Federal Circuit explained that “Chamberlain was merely clarifying its earlier position” in response to One World’s reply brief and “not raising…

PTABWatch

Federal Circuit Reaffirms that Software is Patent Eligible

By Ryan N. Phelan

May 21, 2020

In Uniloc USA, Inc. v. LG Electronics USA, Appeal No. 19-1835 (Fed. Cir. Apr. 30, 2020), the Federal Circuit reaffirmed that software inventions are patentable in the U.S. with a bright-line statement: “Our precedent is clear that software can make patent-eligible improvements to computer technology, and related claims are eligible as long as they are directed to non-abstract improvements to the functionality of a computer or network platform itself.”…

PTABWatch

The Arthrex Mulligan

By Sandip H. Patel

May 12, 2020

The Federal Circuit, in Arthrex, concluded that the Patent and Trial Appeal Board’s Administrative Patent Judges were unconstitutionally appointed “principal” officers. The court therefore vacated the Board’s decision that canceled claims in an inter partes review and remanded so a new panel of APJs would re-decide the patentability of the claims. What happens, however, when the Board’s pre-Arthrex final written decision does not cancel—but rather upholds the patentability of—the challenged claims? Well, there’s an…

Marshall, Gerstein & Borun LLP

Marshall, Gerstein & Borun LLP Blogs

Blog Authors

Denying a Stay and Building an Airplane While Flying It

Fitbit Dodges a Bullet—Entitled to Appeal Portion of Apple’s Petition Which It Did Not Join

Raiders of the Lost Art

Does Section 285 Permit an Award of Attorney’s Fees for Patent Office Proceedings?

Incorporating Entire Arguments by Reference Can Lead to Disastrous Outcomes

Fast-Track Decisions on Ex Parte Appeals

PTAB’s Obviousness Analysis Inconsistent with KSR

Patent Invalidated Despite Owner’s Argument Reinstated On Appeal

Federal Circuit Reaffirms that Software is Patent Eligible

The Arthrex Mulligan

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