Federal Circuit shines ray of hope for substitute claims in IPR

Recently, the United States Court of Appeals for the Federal Circuit issued a decision in Nike, Inc. v. Adidas AG, relating to an appeal from the inter partes review (IPR) of U.S. Patent No. 7,347,011, owned by Nike.

The Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) granted the IPR petition filed by Adidas AG and instituted inter partes review of claims 1–46 of the ’011 patent. Nike then filed a motion to amend in which it requested cancellation of claims 1–46 and proposed substitute claims 47–50. The PTAB granted the motion to cancel claims 1-46, but denied the motion to substitute claims, as has become the norm in virtually all cases.

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Federal Circuit Affirms District Court on Infringement and Definiteness in Dow Chemical Case

On January 29, 2016, the United States Court of Appeals issued a decision in AKZO Nobel Coatings, Inc. v. Dow Chemical Company, relating to an appeal from the United States District Court for the District of Delaware.

Akzo appealed from the district court’s granting of summary judgment that Dow did not infringe the claims of U.S. Patent 6,767,956, either literally or under the doctrine of equivalents. Dow cross-appealed from the court’s conclusion that the claims of the ’956 patent are not indefinite.

Claim 1 of the ‘956 patent was deemed representative and reads as follows:

1. A process for producing a dispersion of a polymer in an aqueous medium in which the polymer is dispersed in an aqueous medium in an extruder at a temperature above 100° C. in an extruder having an outlet

wherein the pressure in the extruder is maintained above atmospheric so that the aqueous medium does not boil characterized by maintaining the pressure above atmospheric for the extruder at the outlet with a pressurized collection vessel and

wherein aqueous dispersion from the extruder has at least 25% by weight of the aqueous medium where the aqueous medium has less than 40% by weight of organic solvent and

wherein the aqueous dispersion enters the outlet and pressurized collection vessel at a pressure above atmospheric so that the aqueous medium does not boil and is subjected to the action of a cooling zone to lower the temperature of the aqueous dispersion to below 100° C. to have an aqueous dispersion with a viscosity below 10 Pa.s.

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CAFC says same panel can decide institution and merits in IPR

Last month, the United States Court of Appeals for the Federal Circuit issued a decision in Ethicon Endo-Surgery, Inv. V. Covidien LP, an appeal from the United States Patent and Trademark Office (USPTO), Patent Trial and Appeal Board (PTAB). The dispute arose as the result of a Covidien inter partes review (IPR) petition challenging claims of U.S. Patent No. 8,317,070 (“the ’070 patent”), which is owned by Ethicon. The PTAB granted the petition and the IPR proceeded to a decision on the merits. On the merits, the same panel that determined that the petition should proceed in the first place, found all challenged claims invalid as obvious over the prior art.

Ethicon appealed to the Federal Circuit, arguing that the PTAB’s final decision was invalid because the same Board panel made both the decision to institute and the final decision. Ethicon also argued that the Board erred in finding the claims obvious.

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CAFC says PTAB does not have to allow timely submission of supplemental information in IPR

Several weeks ago, the United States Court of Appeals for the Federal Circuit issued a decision in Redline Detection, LLC v. Star Envirotech, Inc., relating to an inter partes review (IPR) challenge brought by Redline challenging the validity of certain patent claims of U.S. Patent No. 6,526,808 (the “’808 patent”).

After deciding to institute the IPR, the Patent Trial and Appeal Board (PTAB) found in favor of the patent owner. Redline appealed the decision of the PTAB to the Federal Circuit, arguing that it was improperly denied the opportunity to submit supplemental information under 37 C.F.R. §42.123(a) and that the PTAB erred with respect to finding that claims 9 and 10 of the ‘808 patent were not invalid.

The ‘808 patent, owned by Star Envirotech, relates to methods of generating smoke for use in volatile and explosive environments. More specifically, the ’808 patent describes methods for generating smoke that enables the presence and location of leaks in a fluid system to be accurately and visually detected depending upon rate of the air flow through the fluid system under test and whether smoke escapes from the system. The invention allows for the more accurate testing of whether automobile emissions are leaking into the environment.

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Litigation Funding in Uncertain Patent Eligibility Times

A patent is an exclusive right. This means that the owner of a patent can prevent others from engaging in activities that are covered by an issued patent. But as is true with any right, a patent is only worth something if the owner is willing to take action to preserve the rights and litigate against those who are treading on the rights granted. In the United States, that means litigation in federal district court, which can easily cost millions of dollars.

Today, given the climate within the industry, being willing to take action when infringement is suspected is only the first hurdle. Yes, the decision to undertake litigation is a difficult one regardless of whether it is made by a company or an individual. Attention is diverted from other endeavors and opportunities, and there is a very real financial cost associated with litigating a dispute. Litigation is not free.

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