Spotlight on Upcoming Oral Arguments – May 2018

Monday, April 30, 2018

University of California v. Broad Institute Inc., No. 17-1907, Courtroom 201

In May 2012, UC filed a provisional patent application claiming the use of the CRISPR-Cas9 system in any environment, including eukaryotic cells.  In December 2012, Broad filed a provisional patent application claiming the use of CRISPR-Cas9 in eukaryotic cells.  UC sought an interference, arguing that there was no patentable distinction between Broad’s eukaryotic-specific claims and UC’s broader claims.  The PTAB terminated the interference concluding that there was no interference-in-fact between UC and Broad.  Specifically, the PTAB held that Broad’s claims would not have been obvious to a person of ordinary skill in the art.  

On appeal, UC argues that the PTAB applied an incorrect “rigid, constricted standard for assessing obviousness” to reach a conclusion that is not supported by substantial evidence.  Broad, on the other hand, argues that the PTAB’s conclusion of nonobviousness is supported by substantial evidence.

Tuesday, May 1, 2018

In re Wilkinson, No. 17-2199, Courtroom 402

This appeal arises from a PTAB decision affirming the Examiner’s obviousness rejection.  The claims are directed to a matter or cushion system for supporting a human body to prevent tissue trauma.  The prior art reference is directed to containing and administering doses of substances orally, rectally, topically, or subcutaneously.  The applicant argues that the asserted references are not analogous prior art because it is not in the same field of invention and is not reasonably pertinent to the problem the applicant seeks to address.  The applicant contends that the prior art invention is unsuitable for use in supporting the weight of a human body because it collapses under finger pressure.  The PTO argues that the problem faced by the applicant was not unique to the field of support mattresses and that the prior art reference addressed the same problem.  Thus, the PTO contends that the PTAB correctly determined that the reference constituted analogous prior art.

Click-to-Call Technologies, LP v. Oracle Corporation, No. 15-1242, Courtroom 402

Click-to-Call Technologies (“CTC”) appeals from a final written decision finding the claims of U.S. Patent No. 5,818,836 patent invalid.  In its final written decision, the PTAB held that the Petitioner was not barred from pursuing inter partes review because the complaint that would have triggered the statutory time bar under 35 U.S.C. § 315(b) was voluntarily dismissed without prejudice.  CTC argues that the PTAB’s holding is inconsistent with the plain language and legislative intent behind § 315(b).  Specifically, CTC argues that § 315(b) was intended to provide notice and a limited window to file an IPR petition.  CTC argues that the voluntary dismissal does not negate the triggering event that started the statute of limitations.  Oracle argues that the voluntary dismissal leaves the parties in the position they were in prior to service of the complaint, and therefore, it is though the triggering event never occurred.  Oracle argues that CTC’s interpretation of § 315(b) would allow a patent owner to lull a defendant into believing an IPR petition is unnecessary, only to face a lawsuit a year later after having been stripped of its ability to file an IPR petition. 

Wednesday, May 2, 2018

JTEKT Corporation v. GKN Automotive Ltd., No. 17-1828, Courtroom 402

In this appeal, arising from the PTAB, the Court has been asked to consider whether new arguments may be raised in the Reply Brief in response to arguments raised in the Patent Owner Response.  JTEKT argues that under 37 C.F.R. § 42.23(b), the Petitioner is not limited to the same positions set forth in the Petition.  JTEKT contends that the new arguments in its Reply were proper because they directly respond to arguments raised in the Patent Owner Response.  GKN acknowledges that the Petitioner may reply to the arguments raised in the Patent Owner Response.  GKN argues, however, that the arguments advanced in the Reply must still be tied to the arguments set forth in the Petition.  Thus, GKN argues that JTEKT’s arguments, which were unrelated to the arguments in the Petition, amounted to an impermissible expansion of the scope of a Reply Brief.

Assa Abloy AB v. Spectrum Brands, Inc., No. 17-1817, Courtroom 203

This appeal arises from a PTAB decision finding the claims of Assa Abloy’s patent invalid as obvious.  In its petition, Spectrum argues that the challenged claims were obvious based on either (1) the Nielsen reference in combination with the Karkas reference, or (2) Nielsen alone.  The PTAB instituted review only on the first ground, stating that “no other grounds of unpatentability are authorized for inter partes review.”  In its final written decision, the PTAB invalidated the claims based on the second ground that it had previously rejected.  On appeal, Assa Abloy argues that the PTAB improperly exceeded its authority by relying on a ground it expressly refused to institute.  Assa Abloy argues that it was severely prejudiced by the PTAB’s transgression as it tailored its case to respond to the instituted ground and had no opportunity to respond to the theory upon which the Board ultimately invalidated its patent.  Spectrum argues that the PTAB consolidated the Petition’s two grounds into a single ground for review after finding that the two grounds were duplicative.  Spectrum further argues that Assa Abloy was not “blindsided” by the decision as the Nielsen reference was “front and center during the IPR proceeding” and “the parties hotly contested Nielsen throughout discovery, briefing, and oral argument.”