Federal Circuit says PTAB too narrowly interpreted case law regarding prior art publications in GoPro

On Friday, July 27th, the Court of Appeals for the Federal Circuit issued a precedential opinion in GoPro, Inc. v. Contour IP Holdings, vacating a final written decision coming from the Patent Trial and Appeal Board (PTAB) that had upheld patent claims in the face of a validity challenge petitioned by action camera company GoPro. The Federal Circuit panel of Circuit Judges Jimmie Reyna (author of the opinion), Evan Wallach and Todd Hughes found that the PTAB had erred in finding that a 2009 GoPro catalog did not qualify as a prior art printed publication for rendering the challenged claims invalid for obviousness.

There are two patents at issue in this case which have now been remanded back to the PTAB for further proceedings:

  • U.S. Patent No. 8890954, titled Portable Digital Video Camera Configured for Remote Image Acquisition Control and Viewing. Issued to Contour in November 2014, it covers an integrated, hands-free, portable, wearable, viewfinderless point of view (POV) digital video camera equipped with a wireless Internet protocol and a global navigation and location positioning system.
  • U.S. Patent No. 8896694, same title as the ‘954 patent. Also issued to Contour in November 2014, it claims a POV digital video camera system with GPS and Bluetooth capabilities for capturing action video, tracking data such as speed and elevation, as well as posting video online.

Contour IP, the patent owner, first asserted both of these patents against GoPro in a patent infringement suit filed in November 2015 in the District of Delaware; that case was transferred to the Northern District of California in August 2017. However, in April 2015, about six months before the patents were asserted against GoPro in Delaware, GoPro petitioned the PTAB for inter partes review (IPR) proceedings challenging the validity of both patents.

In both IPR petitions, GoPro submitted a 2009 sales catalog as prior art; the catalog disclosed a digital camera linked to a wireless viewfinder/controller that enables a user to preview the image before recording. Although the PTAB instituted both IPRs after making a determination that GoPro made a threshold showing that the catalog is prior art, both IPRs terminated in final written decisions which concluded that the catalog wasn’t disseminated or otherwise made available to the extent that persons ordinarily skilled in the art could have located it by exercising reasonable diligence.

On appeal, the Federal Circuit found that the PTAB erred in determining that a declaration from a GoPro employee, along with corroborating evidence, wasn’t sufficient to establish public accessibility of the catalog. The GoPro employee had testified that GoPro made the catalog accessible during an action sports vehicle trade show that occurred in July 2009, prior to the critical date of September 13th, 2009 (one year prior to the date of priority for both the ‘954 and ‘694 patents). The PTAB held that the dissemination at this trade show did not make the catalog publicly accessible because the trade show was only open to dealers and not the general public.

“The case law regarding accessibility is not as narrow as the Board interprets it,” the Federal Circuit found, noting that the PTAB only focused on one of several factors for determining public accessibility. Although the trade show was focused on action sports vehicles, the attendees were likely more sophisticated in that space than average consumers, making it more than likely that attendees were also skilled and interested in POV action cameras. “A dealer show focused on extreme sports vehicles is an obvious forum for POV action sports cameras,” the Federal Circuit’s opinion reads. The general public may not have been aware of the trade show but the appellate court found that dealers of POV action sports cameras would be part of the relevant audience. Thus, the Federal Circuit vacated the PTAB’s determination that the GoPro catalog was not prior art and remanded the case for further proceedings.


En banc Federal Circuit overrules Achates on IPR appealability

Several weeks ago, the Federal Circuit issued an en banc decision in Wi-Fi One, LLC v. Broadcom Corp.

This dispute arose because Congress provided that the Director’s determination “whether to institute an inter partes review under this section shall be final and nonappealable.” Id. § 314(d). Notwithstanding, Congress similarly prohibited the Director from instituting inter partes review if the petition requesting that review is filed more than one year after the petitioner, real party in interest, or privy of the petitioner is served with a complaint for patent infringement. 35 U.S.C. § 315(b).

A panel of the Federal Circuit previously held that a § 315(b) time-bar determination is final and nonappealable under § 314(d). See Achates Reference Publishing, Inc. v. Apple Inc. Therefore, in this en banc appeal, the Federal Circuit had to determine whether the bar on judicial review of institution decisions in § 314(d) applies to time-bar determinations made under § 315(b).

The Federal Circuit reversed Achates, and ruled that time-bar determinations under § 315(b) are appealable.

“We find no clear and convincing indication in the specific statutory language in the AIA, the specific legislative history of the AIA, or the statutory scheme as a whole that demonstrates Congress’s intent to bar judicial review of § 315(b) time-bar determinations,” wrote Reyna (pictured left) in the majority opinion. The lack of such a clear and convincing indication from Congress coupled with the strong presumption in favor of judicial review of agency actions lead the majority to hold that time-bar determinations under § 315(b) are appealable. Therefore, this decision overrules Achates’ contrary conclusion.

Substantively, the majority explained that, after reviewing the entire statutory scheme as a whole,  § 315 is not substantively related to the institution decision addressed in § 314(a), and it therefore is not subject to § 314(d)’s bar on judicial review.

A concurring opinion was filed by Judge O’Malley. In her concurring opinion, Judge O’Malley wrote that she agreed with the ruling of the majority, but thought the majority made the question more difficult than it needed to be. O’Malley wrote:

If the United States Patent and Trademark Office (“PTO”) exceeds its statutory authority by instituting an IPR proceeding under circumstances contrary to the language of § 315(b), our court, sitting in its proper role as an appellate court, should review those determinations. Indeed, we should address those decisions in order to give effect to the congressionally imposed statutory limitations on the PTO’s authority to institute IPRs.

O’Malley further explained:

Section 314(d)’s bar on appellate review is directed to the Director’s assessment of the substantive adequacy of a timely filed petition. Because § 315(b)’s time bar has nothing to do with the substantive adequacy of the petition and is directed, instead, to the Director’s authority to act, § 314(d) does not apply to decisions under that provision.


PTAB denies claims of 11th Amendment sovereign immunity

Several weeks ago, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) denied a motion filed by the University of Minnesota in a series of inter partes review (IPR) cases. See Order Denying Patent Owner’s Motion to Dismiss. This extraordinary denial of the motion is newsworthy because Minnesota sought a dismissal of the IPRs based on Eleventh Amendment sovereign immunity. The PTAB previously dismissed similar IPRs against state-owned patents. Here, however, the PTAB in a majority opinion authored by Chief Judge David Ruschke (pictured left), disagreed and refused to dismiss the IPRs.

The PTAB ruled that the University of Minnesota “waived its Eleventh Amendment immunity by filing an action in federal court alleging infringement of the patent being challenged in this proceeding.”


Burden of persuasion on Petitioner for IPR amendments

On October 4, 2017, the United States Court of Appeals for the Federal Circuit issued its much-anticipated decision in Aqua Products, Inc. v. Matal, addressing en banc whether the patent owner has the burden of proving patentability with respect to submitted amended claims during an inter partes review (IPR) proceeding. Previous panels of the Federal Circuit had ruled that the burden of persuasion to demonstrate patentability was with the patent owner, not with the challenger. Sitting en banc, the Federal Circuit issued a narrow ruling saying that the burden of persuasion must remain at all times on the petitioner, including with respect to demonstration of unpatentability of amended claims.

The ruling of the court was described to be “narrow” by Judge O’Malley, who wrote for the majority in announcing the limited decision. There was no consensus among the Judges with respect to the judgment that should be reached and the rationale that should be employed, which meant very little of what was actually written in the five opinions and some 135 pages was actually precedential. This lack of consensus would explain why it took the Federal Circuit ten months after the oral arguments in this case to issue a decision.


Federal Circuit reverses PTAB, says Whirlpool claims are anticipated

The U.S. Court of Appeals for the Federal Circuit recently issued a decision in Homeland Housewares, LLC v. Whirlpool Corporation. The original panel voted 2-1 in favor of Homeland Housewares and overturned a final written decision of the Patent Trial and Appeal Board (PTAB), which had confirmed that challenged claims from a Whirlpool patent were valid.

The Whirlpool patent before the Federal Circuit, which had the validity of the claims upheld at PTAB, is U.S. Patent No. 7581688, titled Blender with Crushed Ice Functionality. The ‘688 patent claims a cycle of operation for a blender having a motor, a container and a cutter assembly in which the motor automatically controls the cutter assembly’s rotational speed to effect a pulsing, each pulse having a constant speed phase, a deceleration phase and an acceleration phase. The resulting invention addressed shortcomings in conventional blender devices with a crushed ice functionality as those other prior art devices would often result in ice that was either over or under crushed. Further, conventional devices had difficulties mixing crushed ice with other contents to an even consistency.