June 2015
CIPA Journal
By Anthony C. Tridico, Ph.D.; Timothy P. McAnulty; Kassandra M. Officer
Authored by Timothy P. McAnulty; Kassandra M. Officer; and Anthony C. Tridico, Ph.D.
The America Invents Act (AIA) of 2011 introduced three new types of post-grant proceedings—inter partes review (IPR), covered business method patent review (CBM), and post-grant review (PGR). These relatively new administrative proceedings conducted before the U.S. Patent Trial and Appeal Board (Board) provide additional opportunities for third party petitioners to challenge the validity of issued patents and have been particularly popular due to their high success rates. Many practitioners are at least generally familiar with these new proceedings, which are heard by a three-judge panel that decides patentability and evidentiary issues. Dissatisfied parties can appeal adverse decisions to the Federal Circuit—the same court that hears all patent appeals from district court litigation.
Since the first petitions were filed in September 2012, the Board has continued to provide its guidance through numerous final decisions and even more interim orders addressing claim interpretation, discovery, amendments, joinder of parties, burdens of proof, and other issues. In February 2015, the Federal Circuit provided its first review of a Board decision in In re Cuozzo Speed Technologies, LLC, a case which is briefly discussed below and is analyzed in more detail in the March 2015 issue.1
Since February 2015, the Federal Circuit has issued nine more decisions and affirmed the Board in each case. Considering that the historical affirmance rate by the Federal Circuit of Patent and Trademark Office (PTO) decisions is quite high, the Court's first ten decisions in the new post-grant proceedings may not be surprising. What may be more surprising, however, is that eight of these ten affirmances were Rule 36 judgments entered without an opinion.2 This is in contrast to the Federal Circuit's general willingness to review district court decisions involving issues arising from these new post-grant proceedings. For example, the Federal Circuit has rendered several written opinions, both affirming and reversing district courts' decisions to grant or deny stays of litigations in favor of IPR proceedings.
A review of the Board's final written decisions and the Federal Circuit's decisions on appeal reveals certain early trends―it seems that the Court will be highly deferential to the Board. In its only two written opinions, the Federal Circuit focused on procedural as opposed to substantive issues and declined to disturb the Board's conclusions about the prior art and patentability determinations. In addition, the Court has issued Rule 36 judgments, providing essentially no guidance, in cases raising relatively interesting issues like requirements for amending claims and waiver. This article provides a brief summary of each of the Federal Circuit's decisions to date and provides some observations on how the Court is likely to handle appeals in post-grant proceedings.
Federal Circuit Rule 36 specifies that "[t]he court may enter a judgment of affirmance without opinion . . . when it determines that any of the following conditions exist and an opinion would have no precedential value." The conditions are:
(a) the judgment, decision, or order of the trial court appealed from is based on findings that are not clearly erroneous;
(b) the evidence supporting the jury's verdict is sufficient;
(c) the record supports summary judgment, directed verdict, or judgment on the pleadings;
(d) the decision of an administrative agency warrants affirmance under the standard of review in the statute authorizing the petition for review; or
(e) a judgment or decision has been entered without an error of law.
A Rule 36 is judgment "does not endorse or reject any specific part of the trial court's reasoning" and is non-precedential, i.e., not binding on the Court.3 It is only binding on the parties.4 Generally, these judgments are handed down shortly after the Court hears oral arguments.
Though the Federal Circuit's reliance on Rule 36 is not uncommon and may be increasing as the volume of appeals increases, it can be perceived by practitioners as an affront. Indeed, former Chief Judge Markey explained that Rule 36 is used "where is it not necessary to explain, even to the loser, why he lost."5
In its first two and only two written opinions, the Federal Circuit focused on procedural issues, giving little attention to substantive issues such as the unpatentability grounds. Instead, the Court addressed whether a party can appeal any part of the Board's institution decision and whether the Board's use of the broadest reasonable interpretation (BRI) standard is proper.
1. In re Cuozzo Speed Technologies, LLC: Claim Construction
In Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, the petitioner challenged claims 1-20 of U.S. Patent No. 6,778,074,6 but the Board only instituted review of claims 10, 14, and 17 based on two obviousness grounds.7 Notably, the petitioner proposed the first ground only against claim 17 and the second ground only against claim 14, but the Board instituted both grounds against all three claims. Applying the BRI standard that the Patent Office has applied for over 100 years, the Board construed the claims and found all three instituted claims unpatentable as obvious over the two prior art combinations proposed by the petitioner. The Board also denied the patent owner's motion to amend, finding that the proposed amendment improperly broadened the scope of the claims relative to the scope of the original claims.
On appeal, the patent owner argued that the Board erred in instituting both grounds against all of the claims, as each ground was proposed against only some of the claims.8 In a split decision, the majority held that the Federal Circuit lacked jurisdiction to review Board decisions to institute or deny petitions seeking to institute a post-grant proceeding even after the Board issues a final written decision in the proceeding.
In addition, the patent owner argued that the BRI standard was inappropriate for post-grant proceedings and that the PTO lacked authority to promulgate a rule setting that standard.9 Rejecting this argument, the majority affirmed the Board's standard based largely on historic patent office practice. As the majority explained, the "standard has been applied in every PTO proceeding involving unexpired patents," and "Congress implicitly adopted the [standard] in enacting the AIA."10 The majority ultimately affirmed the Board's constructions, obviousness determinations made in light of those constructions, and denial of the patent owner's motion to amend.
In dissent, Judge Newman argued that IPR proceedings were created to serve as a surrogate for district court litigation. To serve this purpose, she explained, the Board "must apply the same procedural and substantive law as the district courts."11 Accordingly, Judge Newman argued that application of the BRI standard was inconsistent with the purposes of the AIA.
2. Belden Inc. v. Berk-Tek LLC: Claim Construction
In Berk-Tek LLC v. Belden Inc., the Board instituted review of all claims of U.S. Patent Nos. 7,977,575 and 7,663,061.12 The '575 patent was a continuation of the '061 patent, and both patents were directed to high performance data cables having an interior support ('575 patent) or a separator ('061 patent). Belden challenged the claims of each patent under anticipation and obviousness grounds over various prior art references. The Board applied the same claim constructions for both patents, and in light of these constructions and the Board's interpretation of the prior art, found that the challenged claims were unpatentable. The Federal Circuit affirmed the Board's claim constructions and obviousness conclusions in a non-precedential opinion barely disturbing the Board's claim interpretation or its interpretation of the prior art.13
For each of the eight other appeals, the Federal Circuit affirmed the Board's decisions without any written opinion. Some of these cases, however, raise interesting and unresolved issues like which party bears the burden of proof regarding the patentability of amended claims and whether arguments not advanced in a timely manner before the Board are waived.
1. Helferich Patent Licensing, LLC v. CBS Interactive, Inc.: Motion to Amend Claims
In CBS Interactive, Inc. Helferich Patent Licensing, LLC, the Board determined that all of the challenged claims of U.S. Patent No. 7,155,241 were unpatentable as obvious over two combinations of prior art references.14 The '241 patent was directed to a system for selective paging that notifies a user that a message has been received at a server on the network without sending the entire message to the user's mobile device. After construing the claims, analyzing the prior art references, and determining that the claims would have been obvious, the Board considered whether the patent owner had established a date of invention prior to the filing date of Smith, which would under U.S. law overcome the prior art. As evidence of invention, the patent owner submitted a declaration of the inventor and corroborated that declaration with an undated, handwritten specification. Because the patent owner attempted to corroborate that date of the handwritten specification with the inventor's declaration, the Board declined to accord the handwritten specification a date prior to the filing date of Smith, reasoning that an inventor's declaration cannot constitute independent corroborating evidence, a showing that must be made.
Notably, the patent owner also filed a motion to amend, which the Board denied for several reasons. The Board reasoned that the patent owner failed to proffer any constructions for the new claim terms recited in its proposed amended claims. In addition, the Board reasoned that the patent owner failed to show written description support for the proposed claims, as it did not provide or cite to a copy of the original disclosure of the application that matured into the '241 patent. Finally, the Board reasoned that the patent owner's conclusory statement and patentability analysis were insufficient for the patent owner to carry its burden to show the proposed claims were patentable because the statements were limited to the prior art cited in the petition and did not identify the closest prior art of record know to the patent owner. In addition, the Board explained that the patent owner's analysis was limited to anticipation and did not sufficiently demonstrate that the proposed claims would have been non-obvious.
On appeal, the PTO intervened, arguing that the Board did not abuse its discretion in denying the patent owner's motion to amend.15 Specifically, the PTO argued that any of the three reasons set forth in the Board's decision, taken alone, was sufficient to deny the patent owner's motion to amend. The PTO emphasized "the fundamental point that an IPR proceeding is not an examination-type proceeding," and that proposed claim amendments are not entered automatically.16 The PTO also argued that the AIA authorized the Director to prescribe regulations "'setting forth standards and procedures for allowing the patent owner to move to amend the patent.'"17 Those standards and procedures, the PTO noted, require the patent owner to make a showing of patentability over the prior art it knows of for proposed amended claims. If no such showing were required, the PTO argued, then Congress's purpose behind creating IPR proceedings—to eliminate claims that should never have issued—would be defeated. Despite these issues, the Federal Circuit affirmed the Board's decision without opinion.18
2. Luv N' Care Ltd. v. Munchkin, Inc.: Antedating References and Motion to Amend Claims
In Munchkin, Inc. v. Luv N' Care Ltd., the Board instituted review of the sole claim of U.S. Patent No. D617,465, which was directed to the ornamental design for a drinking cup.19 The Board instituted review based on two obviousness grounds. Instead of arguing that the sole claim was patentably distinct from the references, the patent owner argued that the references were not prior art because the '495 patent was a continuation of an earlier dated application and this entitled it to an earlier effective filing date. The Board, however, rejected this argument, finding that the earlier application did not reasonably convey to those skilled in the art that the inventor had possession of the claimed design. The Board also denied the patent owner's motion to amend, finding that the proposed amended claim would improperly enlarge the claimed subject matter. Nonetheless, the Federal Circuit affirmed the Board's decision without opinion.20
3. Mobile Scanning Technologies, LLC v. Motorola Solutions, Inc.: Motion to Amend Claims
In Motorola Solutions, Inc. v. Mobile Scanning Technologies, LLC, the Board instituted review of claims 18-20 of U.S. Patent No. 6,065,880 based on three anticipation and two obviousness grounds.21 The '880 patent is directed to an adaptor that is electrically coupled to a personal data assistant. Applying the BRI standard, the Board construed the claims, analyzed the prior art and proposed combinations, and determined that all the challenged claims were unpatentable. The Board also denied Patent Owner's motion to amend, finding that the proposed substitute claims did not have written description support or distinguish over the prior art. On appeal, the PTO intervened, arguing (before the Federal Circuit's Cuozzo opinion) in favor of the Board's use of the BRI standard.22 Again, the Federal Circuit affirmed the Board's decision without opinion.23
4. Emcore Corp. v. Nichia Corp.: Motion to Amend Claims and Waiver
In Nichia Corp. v. Emcore Corp., the Board instituted review of claim 1-17 of U.S. Patent No. 6,653,215, which was directed to a method of forming a contact on an n-type III-V semiconductor by depositing four layers of metal and annealing the resulting stack.24 Applying the BRI standard, the Board construed the claims and determined that all of the challenged claims would have been obvious over the asserted prior art. Notably, the patent owner argued that the petitioner's references taught away from the claimed method. But in its reply brief, the petitioner presented a new reference to rebut the patent owner's argument. Relying in part on the petitioner's new reference, the Board rejected the patent owner's teaching away argument. The Board also considered the patent owner's evidence of non-obviousness but found that it was outweighed by the strong evidence of obviousness.
In addition, the Board denied the patent owner's motion to amend, primarily on procedural grounds by finding that the patent owner failed to: (i) identify which proposed substitute claim would replace which challenged claim, (ii) identify new or changed claim limitations, (ii) provide constructions for new claims terms, (iii) respond to the ground of unpatentability, (iv) set forth written description support, or (v) demonstrate patentability over the prior art. Effectively, the patent owner sought an entirely new set of claims but, according to the Board, failed to adequately show how the new claims met all of the requirements for patentability.
On appeal, the patent owner argued that it was improper for the Board to consider the new reference presented in the petitioner's reply to reject its teaching away argument. The PTO intervened, arguing that the patent owner waived this argument by failing to move to exclude this reference during briefing before the Board.25 Despite these issues regarding amendments and waiver, the Federal Circuit affirmed the Board's decision without opinion.26
5. Clearlamp, LLC v. LKQ Corp.: Motion to Amend Claims and Board Discretion
In LKQ Corp.v. Clearlamp, LLC, the Board instituted review of twenty-four claims of U.S. Patent No. 7,297,364 and determined that twelve of the twenty-four claims were unpatentable based on two obviousness grounds.27 The '364 patent is directed to restoring a vehicle's headlights by removing surface wear and scratches. After applying the BRI standard and construing the three claims terms, the Board considered the proposed prior art combinations. Notably, the Board considered evidence presented not only in the petitioner's initial petition and but also evidence presented in the petitioner's reply brief filed after the patent owner's briefing. Based on this evidence, the Board concluded that twelve of the twenty-four challenged claims would have been obvious. The Board then considered the patent owner's evidence of non-obviousness—copying of others and commercial success—but again found the evidence insufficient to overcome the strong evidence of obviousness.
In addition, the patent owner filed a motion to amend claims, offering twenty-four substitute claims on a contingent bases. The Board, however, denied all of the proposed claims, finding that the patent owner had not proposed one for one substitution of claims and that the proposed amended claims failed to distinguish over the prior art.
On appeal, the PTO intervened, arguing (before the Federal Circuit's Cuozzo opinion) that the Board's application of the BRI standard is proper.28 The PTO also argued that Board did not abuse its discretion by considering evidence presented in the petitioner's reply when finding the claims unpatentable. Again, the Federal Circuit affirmed the Board's decision without opinion.29
6. Softview LLC v. Kyocera Corp.: Board Discretion
In Kyocera Corp. v. Softview LLC, the Board determined that all of the challenged claims of U.S. Patent Nos. 7,831,926 and 7,461,353 were unpatentable as obvious under 35 U.S.C. § 103.30 The claims of the '926 patent were challenged based on two combinations of prior art references, and the claims of the '353 patent were challenged based on four combinations of prior art references. Both patents were directed to the scalable display of Internet content, enabling content to be rendered, zoomed, and panned for better viewing on small screens and standard monitors. The Board first construed the claims, rejecting both parties' proposed constructions and providing its own interpretation, using the BRI standard, based on the claims and specification. The Board then considered the proposed prior art combinations, finding that the challenged claims would have been obvious. In addition, the Board rejected the patent owner's evidence of non-obviousness, finding that the patent owner failed to establish the required nexus between the evidence of non-obviousness and the claimed subject matter. The patent owner argued that praise by others and the commercial success of the iPhone and Android devices were evidence of non-obviousness. But the Board, citing Federal Circuit precedent, found that the patent owner did not sufficiently established that the sales of iPhone and Android devices were the result of the claimed invention.
Notably, the Board denied the patent owner's motion to exclude one of the petitioner's expert declarations, which was submitted with the petitioner's reply after the patent owner's brief. The patent owner argued that the declaration improperly addressed new prior art references and advanced new claim construction positions in violation of the Board's regulations31 that require a petitioner's reply brief to be limited to issues raised in the patent owners response. The Board, however, rejected this argument, reasoning that the declaration was drawn to issues raised in the patent owner's response that could not have been addressed in the petition.
On appeal, the PTO intervened in support of the Board's denial of the patent owner's motion to exclude.32 Specifically, the PTO argued that the Board's trial-management decisions should be reviewed for an abuse of discretion and that the Board did not abuse its discretion in permitting the petitioner to reply to arguments raised in the patent owner's response. Again, the Federal Circuit affirmed the Board's decision without opinion.33
7. In re Zillow, Inc.: Express Disavow of Claim Scope
In MicroStrategy, Inc. v. Zillow, Inc., the petitioner challenged claims 1-40 of U.S. Patent No. 7,970,674, but the Board only instituted review of claims 2, 5-17, and 26-40 based on one anticipation ground and four obviousness grounds.34 Of the instituted claims, the Board found that only four claims were unpatentable. The '674 patent is directed to a method for valuing a home that is responsive to owner input, resulting in a more accurate, inexpensive, and convenient valuation. Applying the BRI standard, the Board construed the claims and declined to consider the patent owner's same-proceeding disavow of claim scope (ie an attempt by the patent owner to say, in these same proceedings, rather than having done so in different earlier proceedings, that it would not rely on the broader scope). The Board reasoned that the patent owner has the opportunity to amend its claims to the scope it desired during the current proceeding: "when claim amendments are available, a patent owner has an opportunity to amend claims to a scope it desires, so as to have the substance of any purported same proceeding disavowal reflected in the claim language expressly, "[t]he public should not be burdened with inadequate notice concerning the scope of claims, where the Patent Owner has been provided with an opportunity to amend claims to reflect the scope it desires". Despite these issues, the Federal Circuit affirmed the Board's decision without opinion.35
8. Bd. of Trustees of Univ. of Illinois v. Micron Tech., Inc.: Evidence of Non-Obviousness
In Micron Tech., Inc. v. Bd. of Trustees of Univ. of Illinois, the Board instituted review of all claims of U.S. Patent No. 6,444,533 based on four obviousness grounds.36 The '533 patent was directed to "methods for treating semiconductor devices or components thereof in order to reduce the degradation of semiconductor device characteristics over time."37 Specifically, the '533 patent claimed methods of treating a semiconductor device by passivation with deuterium. Using the BRI standard, the Board construed two claim terms. The Board then considered the proposed prior art combinations, finding all of the challenged claims would have been obvious and rejecting the patent owner's evidence of unexpected results. Specifically, the Board found the patent owner's evidence of unexpected results unpersuasive because it did not compare the results to the closed prior art.38 Again, the Federal Circuit affirmed the Board's decision without opinion.39
In light of the Federal Circuit's historic deference to the PTO and the rules of appellate procedure, Federal Circuit's strong affirmance rate to date may not be overly surprising.
First, the Federal Circuit reviews the Board's factual findings under the Administrative Procedure Act's "substantial evidence" standard. Under that standard, the Court must uphold the PTO's findings if "a reasonable person might find that the evidentiary record supports the agency's conclusion."40 This highly deferential standard applies to the Board's interpretation of the prior art, which may explain why the Federal Circuit has declined to disrupt the Board's anticipation and obviousness determinations. On the other hand, legal conclusions like claim construction are reviewed de novo. But the Court reviews underlying factual findings concerning extrinsic evidence for substantial evidence but reviews legal conclusions concerning intrinsic evidence and the ultimate construction de novo.41 In practice, however, the Board's claim interpretation may receive a wider margin on review because the Board uses the relatively broader BRI standard whereas a district court uses the relatively narrower plain and ordinary meaning standard to interpret claims.42
Second, the Court will most likely deem arguments that were not raised before the Board waived on appeal. Although the full scope of waiver on appeal in post-grant proceedings has not been fully developed, parties will be better served presenting arguments before the Board, with a view toward appeal as well, regardless of which party is successful before the Board. In addition, the Board itself considers arguments made by patent owners in their preliminary responses and not repeated after the Board's institution decision waived. It is not completely clear how this waiver before the Board will impact waiver before the Federal Circuit. For example, the Court has not yet decided if patent owner arguments made in a preliminary response, although made in the record before the Board, will be waived on appeal because the Board may consider those arguments waived. Accordingly, parties should be strategic in developing and presenting arguments early to avoid missed opportunities both before the Board and the Court on appeal.
In summary, the Federal Circuit has issued Rule 36 judgments in several cases that raised interesting issues. For example, five of the eight appeals decided under Rule 36 involved motions to amend claims, an issue on which the Court has provided essentially no guidance to date. Other appeals involved questions of waiver, procedure, and decisions on the weight of secondary considerations that can show non-obviousness. And the PTO intervened in several appeals. So far, the Federal Circuit has effectively only decided what claim construction standard should apply to post-grant proceedings, and has declined to reach the merits on many other issues. With an increasing number of post-grant proceedings filed and instituted, the number of appeals on the Federal Circuit's docket will inevitably rise. Many practitioners consider the Court's use of Rule 36 decisions a means for it to manage its docket. And while it is unlikely that the Court will continue to issue Rule 36 judgments in practically all post-grant appeals, it would not be surprising if this percentage remains at 80%. Nonetheless, at least based on a relatively small (but initial) sampling, the Federal Circuit appears to be highly deferential to the Board's interpretation of the prior art and application of proposed grounds of unpatentability.
Looking forward, there are six other appeals that the Federal Circuit has heard oral arguments in but has not yet rendered a decision.43 Given that the Federal Circuit usually issues a Rule 36 decision relatively soon after oral argument (generally within a week), it is likely that many if not all of these cases will result in written opinions which should provide some additional guidance. Stay tuned as we following this developing area of U.S. patent law.
Endnotes
1 In re Cuozzo Speed Technologies, LLC, 778 F.3d 1271 (Fed. Cir. 2015).
2 Fed. Cir. R. 36.
3 Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed. Cir. 2012).
4 TecSec, Inc. v. Int'l Bus. Machines Corp., 731 F.3d 1336 (Fed. Cir. 2013) cert. denied sub nom. Cisco Sys., Inc. v. TecSec, Inc., 134 S. Ct. 2698 (2014).
5 The Seventh Annual Judicial Conference of the Court of Appeals for the Federal Circuit, 128 F.R.D. 409, 420 (May 24, 1989) (remarks of Hon. Howard T. Markey, C.J., Court of Appeals for the Federal Circuit).
6 The '074 patent is directed to a speed limit indicator and method for displaying speed and the relevant speed limit for use in connection with vehicles.
7 Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 59 (P.T.A.B. Nov. 13, 2013).
8 In re Cuozzo Speed Technologies, LLC, 778 F.3d at 1276. In In re Cuozzo Speed Technologies, LLC, the PTO intervened and the Court granted Garmin's motion to withdraw as an appellee. Brief for Intervenor, In re Cuozzo Speed Technologies, LLC, No. 14-1301 (Fed. Cir. June 5, 2014).
9 37 C.F.R. § 42.100(b) provides that "[a] claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears."
10 Id. at 1281.
11 Id. at 1289.
12 Berk-Tek LLC v. Belden Inc., Case IPR2013-00058, Paper 29 (P.T.A.B. Apr. 28, 2014); Berk-Tek LLC v. Belden Inc., Case IPR2013-00069, Paper 24 (P.T.A.B. Apr. 28, 2014).
13 Belden Inc. v. Berk-Tek LLC, No. 2014-1676, 2015 WL 1781484 (Fed. Cir. Apr. 17, 2015).
14 CBS Interactive, Inc. v. Helferich Patent Licensing, LLC, Case IPR2013-00033, Paper 122 (Mar. 3, 2014).
15 Brief for Intervenor, Helferich Patent Licensing, LLC v. CBS Interactive, Inc., No. 14-1556 (Fed. Cir. Nov. 17, 2014).
16 Id. at 22-24.
17 Id. at 24-28 (quoting 35 U.S.C. § 316(a)(9)).
18 Helferich Patent Licensing, LLC v. CBS Interactive, Inc., 599 F. App'x 955 (Fed. Cir. 2015).
19 Munchkin, Inc. v. Luv N' Care Ltd., Case IPR2013-00072, Paper 28 (Apr. 21, 2014).
20 Luv N' Care Ltd. v. Munchkin, Inc., 599 F. App'x 958 (Fed. Cir. 2015).
21 Motorola Solutions, Inc. v. Mobile Scanning Technologies, LLC, Case IPR2013-00093, Paper 61 (Apr. 24, 2014).
22 Brief for Intervenor, Mobile Scanning Technologies, LLC v. Motorola Solutions, Inc., No. 14-1720 (Fed. Cir. Dec. 29, 2014).
23 Mobile Scanning Technologies, LLC v. Motorola Solutions, Inc., 598 F. App'x 782 (Fed. Cir. 2015).
24 Nichia Corp. v. Emcore Corp., Case IPR2012-00005, Paper 68 (Feb. 11, 2014).
25 Brief for Intervenor, Emcore Corp. v. Nichia Corp., No. 14-1508 (Fed. Cir. Nov. 10, 2014).
26 Emcore Corp. v. Nichia Corp., 599 F. App'x 959 (Fed. Cir. 2015).
27 LKQ Corp.v. Clearlamp, LLC., Case IPR2013-00020, Paper 73 (Mar. 27, 2014).
28 Brief for Intervenor, Clearlamp, LLC v. LKQ Corp., No. 14-1627 (Fed. Cir. Nov. 3, 2014).
29 Clearlamp, LLC v. LKQ Corp., 594 F. App'x 687 (Fed. Cir. 2015).
30 Kyocera Corp. v. Softview LLC, Case IPR2013-00004, Paper 53, Case IRP2013-00257, Paper 12 (P.T.A.B. Mar. 27, 2014); Kyocera Corp. v. Softview LLC, Case IPR2013-00007, Paper 51, Case IRP2013-00256, Paper 12 (P.T.A.B. Mar. 27, 2014). IPR2013-00257, brought by Motorola Mobility LLC, raised the same challenges and was joined with IPR2013-00004. IPR2013-00256, brought by Motorola Mobility LLC, raised the same challenges and was joined with IPR2013-00007.
31 See 37 C.F.R. § 42.23(b).
32 Brief for Intervenor, Softview LLC v. Kyocera Corp., No. 14-1600 (Oct. 28, 2014).
33 Softview LLC v. Kyocera Corp., 592 F. App'x 949 (Fed. Cir. 2015); Softview LLC v. Kyocera Corp., 592 F. App'x 947 (Fed. Cir. 2015).
34 MicroStrategy, Inc. v. Zillow, Inc., Case IPR2013-00034, Paper 42 (Mar. 27, 2014).
35 In re Zillow, Inc., 596 F. App'x 921 (Fed. Cir. 2015). On appeal, the PTO intervened, arguing that the Board's application of the BRI standard was proper and that the Board's unpatentability determinations were supported by substantial evidence. Brief for Intervenor, In re Zillow, Inc., No. 14-1546 (Fed. Cir. Nov. 7, 2014).
36 Micron Tech., Inc. v. Bd. of Trustees of Univ. of Illinois, Case IPR2013-00005, Paper 54 (P.T.A.B. Mar. 10, 2014); see Micron Tech., Inc. v. Bd. of Trustees of Univ. of Illinois, Case IPR2013-00006, Paper 48 (P.T.A.B. Mar. 10, 2014); see also Micron Tech., Inc. v. Bd. of Trustees of Univ. of Illinois, Case IPR2013-00008, Paper 59 (P.T.A.B. Mar. 10, 2014).
37 Id. at 3.
38 Id. at 19.
39 Bd. of Trustees of Univ. of Illinois v. Micron Tech., Inc., 596 F. App'x 923 (Fed. Cir. 2015); see Bd. of Trustees of Univ. of Illinois v. Micron Tech., Inc., 596 F. App'x 921 (Fed. Cir. 2015); see also Bd. of Trustees of Univ. of Illinois v. Micron Tech., Inc., 597 F. App'x 1082 (Fed. Cir. 2015).
40 On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085 (Fed. Cir. 2000).
41 Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
42 District courts construe claim according to the principles the Federal Circuit articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under Phillips, claims are given "the meaning that [they] would have to a person of ordinary skill in the art in question at the time of the invention." Id.
43 Trs. of Columbia Univ., Nos. 14-1547, 14-1548; 14-1550 (Fed. Cir. argued April 9, 2015); In re. Cont'l Auto. Sys., No. 14-1573 (Fed. Cir. argued April 8, 2015); Merck & Cie v. Gnosis SPA, No. 14-1779 (Fed. Cir. argued April 7, 2015); Microsoft Corp. v. Proxyconn Inc., Nos. 14-1542 and 14-1543 (Fed. Cir. argued April 7, 2015); S. Ala. Med. Sci. v. Gnosis SPA, Nos. 14-1778, 14-1780, 14-1781 (Fed. Cir. argued April 7, 2015); and Versata Dev. Grp. v. SAP Am. Inc., No. 14-1194 (Fed. Cir. argued Dec. 3, 2014).
Patent Trial and Appeal Board (PTAB), United States Court of Appeals for the Federal Circuit (CAFC)
Originally printed in CIPA Journal. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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