PTAB, District Courts Diverge on Scope of Estoppel

Authored by Brian S. Mudge

We have previously written about how the Federal Circuit and the PTAB are applying the AIA estoppel provisions.[1] Since the Federal Circuit’s Shaw ruling, several recent opinions have construed the scope of estoppel. Two of these cases, from district courts, cases have applied estoppel narrowly. But a recent PTAB decision, issued in the wake of these decisions, shows that the Board is not following the lead of the district courts, but instead is continuing to apply its broad approach to estoppel. It will likely be left to the Federal Circuit to resolve the difference, although the Court of Appeals recently declined an invitation to take on the issue.

Click here to continue reading...

Patent Owner’s Challenge to Wayback Machine Evidence Fails

Authored by Brian S. Mudge

We have previously written about disputes over prior art used in an AIA patent trial. A recent case presented challenges to materials obtained from the Internet. The case, Johns Manville Corp. v. Knauf Insulation, Inc.,[1] involved a petitioner’s reliance on exhibits downloaded from the Wayback Machine as prior art. In its final written decision, the PTAB determined that Wayback Machine exhibits were sufficiently authenticated and reliable to withstand a motion to exclude. However, the Board’s ruling did not specifically address one aspect of the challenge relating to a party, Alexa Internet, which initially captured the Internet pages that were archived.

Click here to continue reading...

CAFC Rejects Broad Eligibility For CBM Review, Adds to Program Uncertainty

Authored by Brian S. Mudge

We have previously written about the uncertainty in CBM reviews resulting from the PTAB’s inconsistent approaches in determining whether patents qualify for CBM review.[1] What had been consistent, however, was the PTAB’s broad definition of a CBM patent. In a recent decision, however, the Federal Circuit has rejected the PTAB’s broad reading of eligibility for CBM review, finding that the standard applied by the PTAB did not follow the statutory definition. The case, Unwired Planet, LLC v. Google Inc.,[2] ruled that the Board could not apply a CBM standard that queried whether a patent claimed activities “incidental to” or “complementary to” a financial activity.

Click here to continue reading...

PTAB Rules Dealer Show Catalog Fails to Qualify as Prior Art

Authored by Brian S. Mudge and co-authored by Dragan Plavsic

In a recent decision, the Patent Trial and Appeal Board held that a reference used to support each of the grounds for invalidity did not qualify as prior art. The case, GoPro v. Contour IP,[1] involved the Board’s analysis of whether a reference, the GoPro Catalog, was publicly accessible to persons of ordinary skill in the art. Because the Petitioner failed to establish that reference was publicly accessible to ordinary artisans, the PTAB rejected the instituted prior art challenges without reaching the merits of the obviousness grounds. The Board also denied the parties’ respective admissibility challenges to evidence relating to the GoPro Catalog.

Click here to continue reading...

Federal Circuit Declines Review of PTAB Assignor Estoppel Ruling

Authored by Brian S. Mudge

In a recent precedential opinion, the Federal Circuit dismissed a patent owner’s appeal of a ruling by the PTAB that assignor estoppel does not prevent a former patent owner from challenging a patent via inter partes review. The case, Husky Injection Molding Systems Ltd. v. Athena Automation Ltd.,[1] saw the court of appeals effectively defer to the Board on the question of assignor estoppel because, in its view, the issue does not fall within the “narrow” exceptions to the “broad” bar against review of institution decisions.

Click here to continue reading...