Board Issues Mixed Rulings on Patent Eligibility After Enfish

Authored by Brian Mudge and Christopher Gresalfi

In two CBM decisions following the Federal Circuit’s recent Enfish1 opinion, the PTAB has considered patent eligibility of inventions directed to computer databases. The result: one ruling in favor of patent eligibility and one against. These decisions highlight the importance, when adjudicating section 101 challenges, of determining what problem the patent at issue is attempting to solve – and the patent specification may be critical to answering this question.

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Federal Circuit: Estoppel Does Not Apply to Non-Instituted Grounds

Authored by Brian S. Mudge and Ksenia Takhistova

In a recent precedential opinion in Shaw Indus. Group, Inc. v. Automated Creel Sys., Inc.1, the Federal Circuit decided that IPR estoppel provisions in § 315(e) will not apply to any invalidity ground that the petitioner raised in the petition but the PTAB chose to not institute for redundancy. Another precedential opinion issued less than two weeks later in HP Inc. v. MPHJ Tech. Investments, LLC2 confirmed this result.

Background:

Both cases involve an appeal from PTAB final decisions in IPR proceedings. In the first case, Shaw was once a defendant in a patent-infringement case brought by Automated Creel over its US Patent No. 7,806,360 directed to “creels” for supplying yarn and other stranded materials to a manufacturing process. Shaw filed two petitions for inter partes review of the ’360 patent claims, which were later consolidated and resulted in one final decision. The Board did not institute many grounds proposed by Shaw, denying them as redundant, including a ground from the first petition that some of the ’360 patent claims were anticipated by the Payne reference. In the final written decision, the Board invalidated some, but not all, of the ’360 patent claims based on the instituted grounds. Shaw appealed from the Board’s decision, and also petitioned for a writ of mandamus, requesting the Federal Circuit to instruct the PTO to institute IPR based on the Payne reference.

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PTAB Grants Rare Claim Amendment in an IPR

Authored by Brian S. Mudge and Dragan Plavsic 

In a recent IPR decision, the PTAB granted a patent owner’s motion to amend, a relatively rare occurrence in AIA trials to date. The case, Shinn Fu Co. of America, Inc. v. The Tire Hanger Co., No. IPR2015-00208, addressed the extent to which a patent owner must analyze prior art in meeting its requirements to establish patentability of proposed new claims. Providing further guidance as to the Federal Circuit’s recent Nike1 opinion, the PTAB ruled that there is no requirement that a patent owner analyze expressly every individual reference cited during prosecution of the challenged patent — particularly where there are many different permutations of the cited prior art. Essentially, the PTAB’s decision means that so long as the patent owner groups prior art references according to claim features they teach, and examines a representative one out of each group for each feature, the patent owner would meet its duty of candor and satisfy its burden for the motion to amend.

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Federal Circuit Rules on Burden to Establish Patentability of Amended Claims

Authored by Brian S. Mudge and Dragan Plavsic

In a recent decision, the Federal Circuit confirmed that the burden of proof shifts from petitioner to patent owner to establish patentability of substitute claims proposed in AIA post-grant proceedings. The case, Nike, Inc. v. Adidas AG, No. 2014-1719 (Feb. 11, 2016), involved an appeal of a PTAB decision denying Nike’s motion to amend claims in an IPR. In reviewing the burden of proof for claim amendments, the Federal Circuit agreed that the burden is on the patent owner to demonstrate that the substitute claims are patentable not only over the prior art already of record but also over prior art known to the patent owner. Moreover, the Federal Circuit ruled that the patent owner may satisfy its burden as to prior art not of record by meeting its duty of candor and good faith in addressing additional prior art known to the patent owner, if any.

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Federal Circuit Approves PTAB Trial Approach

Authored by Brian S. Mudge

In a split decision, the Federal Circuit has approved the PTAB’s practice of deciding to institute AIA trials on a claim-by-claim basis. The case, Synopsys, Inc. v. Mentor Graphics Corp., No. 2014-1516 (Feb. 10, 2016), involved an appeal of a PTAB final decision that did not address all claims that were initially challenged in the IPR petition. Rejecting the petitioner’s argument that the PTAB’s final decision must address each claim challenged in an IPR petition, the Federal Circuit held that the PTAB had discretion to institute inter partes review on less than all claims initially presented in the petition. The Federal Circuit also ruled that the PTAB’s determination on the issue of a potential time bar could not be appealed, and that the PTAB properly handled the patent owner’s motion to amend.

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