"Fed. Circ. Affirms Automakers' PTAB Wins On Motor Patent" - Oblon Attorneys featured in Law360 Article
"The Federal Circuit on Monday backed wins by Honda, Toyota and Aisin Seiki Co. Ltd., upholding consolidated decisions from the Patent Trial and Appeal Board that the automakers showed several claims in an Intellectual Ventures electric motor patent are invalid." Aisin Seiki was represented by John Kern and Eric Schweibenz.
On March 23, 2020, approximately two months after all briefs were submitted, the Fed. Cir. has denied the outstanding petitions for panel rehearing and rehearing en banc in Arthrex, Inv. v. Smith & Nephew, Inc. (CAFC No. 2018-2140) (decision here). As a reminder, the Arthrex panel concluded that the PTAB's Administrative Patent Judges (APJs) were improperly appointed principal officers under the Constitution's Appointments Clause. To remedy this deficiency, the panel severed the APJ's Title 5 removal protections, thereby (according to the panel) rendering APJs inferior officers and prospectively curing any Appointments Clause infirmity in PTAB final written decisions post October 31, 2019. The Fed. Cir.'s rehearing denial leaves a change to the current Arthrex remedy in the hands of Congress or the Supreme Court.
Last March I wrote about the PTAB's Precedential Opinion Panel (POP) taking up its first case in Proppant Express Invs., LLC et al. v. Oren Tech., LLC (article here). In that case, the POP concluded that, where fairness requires it, 35 U.S.C. § 315(c) allows a petitioner to file an otherwise time-barred IPR petition and join that petition to its previously-instituted IPR to request joinder and consideration of new issues ("issue joinder"). Although this tool was rarely used, issue joinder allowed an IPR petitioner to attempt to add new claims/grounds to a previously instituted IPR if, for example, those claims were asserted by the patent owner after petitioners' one-year-filing window. Just over a year later, the Fed. Cir. has reversed this POP decision.
In Samsung Electronics America, Inc. v. Prisua Engineering Corp., the Fed. Cir. confirmed that, outside of the context of a motion to amend, the PTAB cannot cancel claims for indefiniteness in an IPR proceeding. Specifically, the Court found that if the PTAB cannot ascertain the scope of a claim with reasonable certainty for purposes of assessing patentability, the proper course for the PTAB to follow "is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on the merits with respect to whether petitioner had established the unpatentability of those claims under sections 102 or103. It would not be proper for the Board to cancel claims on a ground that is unavailable in an IPR."
Motions to amend (MTAs) are generally disfavored. The prevailing approach calls for patentees to file an MTA in Inter Partes Review (IPR) only in limited circumstances. In particular, most patentees are moving to narrow or clarify claim scope via an MTA only in cases where (i) there is no related application pending at the Office and (ii) the specter of lost past damages due to intervening rights outweighs the risk of an invalidity finding. At first glance, neither (i) nor (ii) appears to be true in the case of Intuitive Surgical, Inc. v. Ethicon, LLC, (IPRs2018-00933, 00934, and 00935), yet Ethicon elected to pursue an MTA in each of the IPRs and was successful in doing so.
The Federal Circuit in a precedential opinion in Arthrex, Inc. v. Smith & Nephew, Inc., vacated and remanded a final written decision of the Patent Trial and Appeal Board (PTAB), finding that the Administrative Patent Judges (APJs) are not constitutionally appointed, violating the Appointments Clause. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Oct. 31, 2019). The opinion in Arthrex also indicates that an Appointments Clause challenge should be timely raised on appeal, and thus, is waived when not presented in an appeal that has passed or been decided.
The Federal Circuit in a precedential opinion in Osai Pharmaceuticals, LLC v Apotex et al (Fed. Cir., October 4, 2019) http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1925.Opinion.10-4-2019.pdfreversed the USPTO's determination of obviousness in an IPR for patent claims directed to the treatment of non-small cell lung cancer (NSCLC). Just reading the background of the first three or four pages of the decision, it was already apparent that the Court was not going to be affirming the PTAB's decision. Notably:
Five years after Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208 (2014) and the institution of the Alice test, district courts are still wading through precedent set by the Federal Circuit while it attempts to apply the test. Recently, one New Mexico District Court turned to prior art introduced during the prosecution process that was aimed at the questions of novelty and non-obviousness to determine whether there was an "inventive concept" for the Alice/Mayo test.