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.


Is Inter Partes Review Good for the Patent System?

The America Invents Act (AIA) ushered in a new era for patent law and procedure at the United States Patent and Trademark Office. Among the changes that took effect were the much-debated shift away from the first-to-invent standard and to a first-to-file standard that is far more consistent with the rest of the world, although not identical.

Philosophically, the shift to a first-to-file system represents a major shift, but in truth, the U.S. had a de facto first-to-file system already. It had been years since a small entity (i.e., a company with 500 or fewer employees) had been able to prevail by demonstrating that they invented before another party filed a patent application. For the most part, much of the focus on first-to-file has done nothing more than divert attention from the most significant change from the patent owners perspective….

There is little doubt that the largest change ushered in by the AIA was the creation of administrative patent trials, namely Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) Review.


CAFC rules IPR petitioner bears burden to establish entitlement to provisional priority

Several weeks ago, the United States Court of Appeals for the Federal Circuit issued a decision in Dynamic Drinkware v. National Graphics, which asked the Court to determine who has the burden with respect to whether a provisional patent application sufficiently supports a later-issued patent so as to become effective prior art as of the provisional filing date in an inter partes review.

National Graphics owns U.S. Patent 6,635,196, which is directed to making molded plastic articles bearing a “lenticular” image. The ’196 patent issued on October 21, 2003, from an application filed on November 22, 2000. The ’196 patent claims the benefit of U.S. Provisional Application 60/211,112, filed on June 12, 2000.

Dynamic petitioned the PTO for inter partes review of the ’196 patent. In its petition, Dynamic argued that claims 1, 8, 12, and 14 of the ’196 patent were anticipated by U.S. Patent 7,153,555 (“Raymond”). The application for Raymond was filed on May 5, 2000, claiming the benefit of U.S. Provisional Application 60/182,490 (the “provisional application” or “Raymond provisional application”), filed on February 15, 2000. The PTO granted the petition in part, and instituted trial on claims 1 and 12.


Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) Firstlegoleague.org: FLL Global Innovation Award Ceremony On June 19, 2012, the FIRST® LEGO® League – a robotics program designed to get children excited about science and technology – recognized the finalists and winner of the FLL Global Innovation Award Food Factor® Season. According to the site, “The FIRST® LEGO® League Global Innovation Award is designed to encourage and assist FLL teams of 10 children and 1 adult to further develop their innovative solutions to real-world problems.  This year, the FLL Food Factor season challenged kids around the world to solve a food safety problem.” The winning entry was the “Shield of Protection Fruit Safe Label”, a sticker made out of food grade materials that would not peel off readily. To remove, the label must be scrubbed off with water, thus reminding people to wash fruit thoroughly prior to consumption.

2) Reuters: Kodak Sues Apple, Claiming Interference in Patent Sales – This article discusses how Kodak filed a lawsuit against Apple claiming Apple is the largest infringer of patents in Kodak’s digital-capture portfolio on top of being a  potential purchaser of those patents. According to the article, “Apple’s strategy has been to use its substantial cash position to delay as long as possible the payment of royalties to Kodak” and interfere with the sale, Kodak said.” (more…)

Attack on Lam Research Plasma Processing Patent, Among the Reexamination Requests Filed the Week of Nov. 28, 2011

Here is our latest weekly installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor…

Advanced Micro-Fabrication Equipment has requested reexamination of Lam Research’s U.S. Patent No. 5,998,932 related to plasma processing equipment (see ex parte Request No. (6)). Lam has sued AMFE for infringement of the Taiwanese counter-part patent and might soon sue in the United States for infringement of the ‘932 patent.

Reexamination was also requested for a Xerox patent (see inter partes Request No. (5)), but the identity of the requester is not shown in the PTO records.

 The following inter partes requests were filed: (more…)