Patent Case Summaries February 6, 2019

Patent Case Summaries | Week Ending February 1, 2019

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

Duncan Parking Techs., Inc. v. IPS Group, Inc., Nos. 18-1205, -1360 (Fed. Cir. (PTAB and S.D. Cal.) Jan. 31, 2019). Opinion by Lourie, joined by Dyk and Taranto.

In a combined appeal, the Federal Circuit (i) reversed the Board’s decision that certain claims of U.S. Patent No. 7,854,310 are not unpatentable as anticipated under 35 U.S.C. § 102(e), (ii) affirmed a district court’s decision granting summary judgment of noninfringement of the ’310 patent, and (iii) vacated the district court’s decision granting summary judgment of noninfringement of U.S. No. 8,595,054 due to an overly narrow claim construction.

IPS Group accused Duncan Parking Technologies (DPT) of infringing the ’310 and ’054 patents. In response, DPT filed a petition for inter partes review of the ’310 patent, arguing that the ’054 patent anticipated the challenged claims under § 102(e). Following institution, IPS did not dispute anticipation; instead, IPS argued that the ’054 patent is not prior art under § 102(e) because the anticipating disclosure was solely attributable to an inventor who was also an inventor of the ’310 patent, meaning the anticipating disclosure was not “by another” as required by § 102(e). The Board agreed, and DPT appealed. Meanwhile, the district court construed certain claim terms in the patents and, on those constructions, granted summary judgment of noninfringement. IPS appealed.

The Federal Circuit combined the separate appeals by DPT and IPS. The court first reversed the Board’s decision, agreeing with DPT that the ’054 patent anticipated the challenged claims of the ’310 patent. The court ruled that the anticipating disclosure of the ’054 patent was attributable to both named inventors, meaning the inventive entity differed from that of the ’310 patent, thus qualifying the ’054 patent as prior art under § 102(e). Next, the Federal Circuit addressed the district court’s claim constructions, concluding that the court had correctly construed and applied the relevant term of the ’310 patent. Accordingly, the Federal Circuit affirmed the grant of summary judgment of noninfringement for that patent. As for the ’054 patent, the Federal Circuit vacated and remanded the district court’s grant of summary judgment of noninfringement because the court had construed the relevant term too narrowly.

Mylan Pharmaceuticals Inc., et al. v. Research Corp. Techs., Inc., Nos. 17-2088, -2089, -2091 (Fed. Cir. (PTAB) Feb. 1, 2019). Opinion by Lourie, joined by Bryson and Wallach.

In affirming the Patent Trial and Appeal Board’s judgment, the Federal Circuit held that (i) the appellants had standing under 35 U.S.C. § 319 to maintain the appeal; (ii) the Board did not err in concluding that the petitioners had not shown Claims 8-13 of U.S. Reissue Patent 38,551 to be unpatentable; and (iii) the appellants had waived a request for a remand to the Board in light of SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).

In a petition for inter partes review, a petitioner challenged the ’551 patent based on eight grounds of unpatentability. The Board instituted review based on two grounds involving three prior art references. Following institution, three more petitioners filed petitions as to the ’551 patent, accompanied by motions for joinder, which the Board accepted. Each of these petitioners had been sued for infringement of the ’551 patent more than one year before their petitions were filed. In the Board’s final written decision, the Board determined that the petitioners had failed to demonstrate a sufficient motivation for modifying a particular chemical compound, and therefore upheld the challenged claims. The later-joined petitioners, but not the original petitioner, appealed.

The Federal Circuit affirmed, first holding that the appellants had standing to appeal. The court explained that 35 U.S.C § 315 provides for joinder of petitioners as “parties” to an inter partes review, and 35 U.S.C. § 319, in turn, provides a right of appeal to any “party” dissatisfied with the Board’s final written decision. Turning to the merits, the Federal Circuit upheld the Board’s nonobviousness conclusion. The court determined that substantial evidence supported the Board’s finding that the appellants failed to meet their burden to establish a motivation to modify a particular chemical compound at issue. Finally, the Federal Circuit held that the appellants had waived their request, made for the first time during oral argument, that the court remand the case in light of SAS. The court reiterated that “a party’s request for SAS relief can be waived,” and here the appellants’ request “was not prompt.”

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