Justia Patents Opinion Summaries

Hyatt is the named inventor on more than 70 patents and approximately 400 pending applications, all filed before June 1995. With numerous amendments, those pending applications contained approximately 115,000 total claims by 2015. Each application incorporates and claims priority from applications dating back to the early 1970s. By 2015, the Patent Office (PTO) dedicated 14 full-time patent examiners to Hyatt’s applications. In the mid-2000s, the PTO started issuing final rejections, prompting appeals to the Patent Trial and Appeal Board (PTAB); the examiners never filed answers to Hyatt’s briefs, preventing PTAB from acquiring jurisdiction over his appeals. In 2013, the PTO issued formal “Requirements,” that Hyatt limit the number of claims from each patent family to 600 absent a showing that more were necessary, identify the earliest possible priority date and supporting disclosure for each selected claim, and present a copy of the selected claims to the PTO. The Federal Circuit upheld the "unique requirements." The PTO reopened prosecution of 80 previously-rejected applications. In 2014, Hyatt sued, alleging the PTO unreasonably delayed examination of his applications by reopening prosecution rather than letting PTAB hear his appeals. The PTO won summary judgment. Hyatt filed a petition (5 U.S.C. 553(e)) requesting that the PTO either repeal Manual of Patent Examining Procedure 1207.04 or declare it unenforceable. Section 1207.04 describes an examiner’s ability to, “with approval from the supervisory patent examiner, reopen prosecution to enter a new ground of rejection in response to appellant’s brief.” The Federal Circuit affirmed the dismissal of Hyatt’s 2016 suit challenging the denial of that petition. Hyatt’s claims are either time-barred or reliant on mistaken statutory interpretation. View "Hyatt v. United States Patent and Trademark Office" on Justia Law

SAS sought inter partes review (35 U.S.C. 311(a)) of ComplementSoft’s software patent, alleging that all 16 of the patent’s claims were unpatentable. The Patent Office instituted review on some of the claims and denied review on the rest. The Federal Circuit rejected SAS’s argument that section 318(a) required the Board to decide the patentability of every claim challenged in the petition. The Supreme Court reversed. When the Patent Office institutes an inter partes review, it must decide the patentability of all of the claims the petitioner has challenged. Section 318(a), which states that the Board “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner” is mandatory and comprehensive. The Director’s claimed “partial institution” power (37 CFR 42.108(a)) appears nowhere in the statutory text. The statute envisions an inter partes review guided by the initial petition. While section 314(a) invests the Director with discretion on whether to institute review, it does not invest him with discretion regarding what claims that review will encompass. The Director’s policy argument—that partial institution is efficient because it permits the Board to focus on the most promising challenges and avoid spending time and resources on others—is properly addressed to Congress. View "SAS Institute Inc. v. Iancu" on Justia Law

SAS sought inter partes review (35 U.S.C. 311(a)) of ComplementSoft’s software patent, alleging that all 16 of the patent’s claims were unpatentable. The Patent Office instituted review on some of the claims and denied review on the rest. The Federal Circuit rejected SAS’s argument that section 318(a) required the Board to decide the patentability of every claim challenged in the petition. The Supreme Court reversed. When the Patent Office institutes an inter partes review, it must decide the patentability of all of the claims the petitioner has challenged. Section 318(a), which states that the Board “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner” is mandatory and comprehensive. The Director’s claimed “partial institution” power (37 CFR 42.108(a)) appears nowhere in the statutory text. The statute envisions an inter partes review guided by the initial petition. While section 314(a) invests the Director with discretion on whether to institute review, it does not invest him with discretion regarding what claims that review will encompass. The Director’s policy argument—that partial institution is efficient because it permits the Board to focus on the most promising challenges and avoid spending time and resources on others—is properly addressed to Congress. View "SAS Institute Inc. v. Iancu" on Justia Law

Oil States sued Greene's Energy for infringement of a patent relating to technology for protecting wellhead equipment used in hydraulic fracturing. Greene’s challenged the patent’s validity in court and petitioned the Patent Office for inter partes review, 35 U.S.C. 311-319. The district court issued a claim-construction order favoring Oil States; the Board concluded that Oil States’ claims were unpatentable. The Federal Circuit rejected a challenge to the constitutionality of inter partes review. The Supreme Court affirmed. Inter partes review does not violate Article III. Congress may assign adjudication of public rights to entities other than Article III courts. Inter partes review falls within the public-rights doctrine. Patents are “public franchises” and granting patents is a constitutional function that can be carried out by the executive or legislative departments without “judicial determination.’ Inter partes review involves the same basic matter as granting a patent. Patents remain “subject to [the Board’s] authority” to cancel outside of an Article III court. The similarities between the procedures used in inter partes review and judicial procedures does not suggest that inter partes review violates Article III. The Court noted that its decision “should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause.” When Congress properly assigns a matter to adjudication in a non-Article III tribunal, “the Seventh Amendment poses no independent bar to the adjudication of that action by a nonjury factfinder.” View "Oil States Energy Services, LLC v. Greene's Energy Group, LLC" on Justia Law

Oil States sued Greene's Energy for infringement of a patent relating to technology for protecting wellhead equipment used in hydraulic fracturing. Greene’s challenged the patent’s validity in court and petitioned the Patent Office for inter partes review, 35 U.S.C. 311-319. The district court issued a claim-construction order favoring Oil States; the Board concluded that Oil States’ claims were unpatentable. The Federal Circuit rejected a challenge to the constitutionality of inter partes review. The Supreme Court affirmed. Inter partes review does not violate Article III. Congress may assign adjudication of public rights to entities other than Article III courts. Inter partes review falls within the public-rights doctrine. Patents are “public franchises” and granting patents is a constitutional function that can be carried out by the executive or legislative departments without “judicial determination.’ Inter partes review involves the same basic matter as granting a patent. Patents remain “subject to [the Board’s] authority” to cancel outside of an Article III court. The similarities between the procedures used in inter partes review and judicial procedures does not suggest that inter partes review violates Article III. The Court noted that its decision “should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause.” When Congress properly assigns a matter to adjudication in a non-Article III tribunal, “the Seventh Amendment poses no independent bar to the adjudication of that action by a nonjury factfinder.” View "Oil States Energy Services, LLC v. Greene's Energy Group, LLC" on Justia Law

In an inter partes review proceeding (IPR), Arthrex disclaimed all the subject claims before the Patent and Appeal Board issued an institution decision. The Board entered an adverse judgment. The Federal Circuit affirmed, holding that the decision is appealable and that the Board’s interpretation is consistent with the regulation. The court did not address whether the regulation is authorized by the statute or whether it was properly promulgated. While 37 C.F.R. 42.107(e) states that no IPR "will be instituted based on disclaimed claims,” 37 C.F.R. 42.73(b) provides: A party may request judgment against itself at any time... Actions construed to be a request for adverse judgment include: (1) Disclaimer of the involved application or patent; (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial; (3) Concession of unpatentability or derivation of the contested subject matter; and (4) Abandonment of the contest. Although Arthrex stated that it was not requesting an adverse judgment, the rules permit the Board to construe a statutory disclaimer of all challenged claims as a request for adverse judgment, even when the disclaimer occurs before the Board has entered a decision, The court noted that the adverse judgment has an estoppel effect and that Arthrex had two pending continuation patent applications that have since issued as patents. View "Arthrex, Inc. v. Smith & Nephew, Inc." on Justia Law

In an inter partes review proceeding (IPR), Arthrex disclaimed all the subject claims before the Patent and Appeal Board issued an institution decision. The Board entered an adverse judgment. The Federal Circuit affirmed, holding that the decision is appealable and that the Board’s interpretation is consistent with the regulation. The court did not address whether the regulation is authorized by the statute or whether it was properly promulgated. While 37 C.F.R. 42.107(e) states that no IPR "will be instituted based on disclaimed claims,” 37 C.F.R. 42.73(b) provides: A party may request judgment against itself at any time... Actions construed to be a request for adverse judgment include: (1) Disclaimer of the involved application or patent; (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial; (3) Concession of unpatentability or derivation of the contested subject matter; and (4) Abandonment of the contest. Although Arthrex stated that it was not requesting an adverse judgment, the rules permit the Board to construe a statutory disclaimer of all challenged claims as a request for adverse judgment, even when the disclaimer occurs before the Board has entered a decision, The court noted that the adverse judgment has an estoppel effect and that Arthrex had two pending continuation patent applications that have since issued as patents. View "Arthrex, Inc. v. Smith & Nephew, Inc." on Justia Law

The 215 patent is directed to improving the efficiency by which messages are sent from a receiver to a sender in a telecommunications system to advise the sender that errors occurred in a particular message. In inter partes review, the Patent Trial and Appeal Board found that various claims were anticipated. The Federal Circuit initially affirmed, holding that whether the petition for review was time-barred was not subject to judicial review. On rehearing, en banc, the Federal Circuit remanded. The Patent and Trademark Office is prohibited 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); under section 314(d) the determination “whether to institute an inter partes review under this section shall be final and nonappealable.” The court, noting the strong presumption in favor of judicial review of agency actions, found no clear and convincing indication of congressional intent to prohibit review of time-bar determinations under section 315(b). In finding such rulings appealable, the court overruled its own precedent. View "Wi-Fi One, LLC v. Broadcom Corp." on Justia Law

Tropp’s patents are directed to the use of dual-access locks in airline luggage inspection. Tropp’s system permits the Transportation Security Administration (TSA) to unlock, inspect, and relock checked baggage. Sentry administers a similar system and has license agreements with lock and luggage manufacturers. Under an Agreement with TSA, Sentry provides TSA with passkeys for distribution to field locations. TSA takes no responsibility for damage to baggage secured with Sentry locks but will make good faith efforts to distribute and use the passkeys. TSA does not endorse any particular system. Following earlier appeals, the district court granted summary judgment, finding that Sentry and its licensees did not infringe Tropp’s patents under 35 U.S.C. 271(a). The Federal Circuit vacated. A reasonable jury could conclude that TSA’s performance of the final two claim steps is attributable to Sentry such that Sentry is liable for direct infringement. Although the partnership-like relationship between Sentry and TSA is unique, the court should have considered evidence that TSA, hoping to obtain access to certain benefits, can only do so if it performs certain steps identified by Sentry, under terms prescribed by Sentry. Sentry can stop or limit TSA’s ability to practice the final two steps by terminating the Agreement, discontinuing its practice of replacing passkeys that are damaged or lost or changing the design of future locks such that the TSA keys no longer work. View "Travel Sentry, Inc. v. Tropp" on Justia Law

A third party may ask the Patent and Trademark Office (PTO) for inter partes review to reexamine claims in an issued patent and to cancel any claim found to be unpatentable in light of prior art; the decision “whether to institute an inter partes review . . . shall be final and non-appealable,” 35 U.S.C. 314(d). PTO is authorized to issue regulations governing inter partes review. One such regulation provides that, during inter partes review, a patent claim “shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” Garmin sought inter partes review of Cuozzo’s patent, asserting that claim 17 was obvious in light of prior patents. PTO reexamined claims 17, 10 and 14, finding those claims to be logically linked to the challenge; concluded that the claims were obvious in light of prior art; and canceled the claims. The Federal Circuit and Supreme Court affirmed. Section 314(d) bars a challenge to the decision to institute review. The “strong presumption” favoring judicial review is overcome by clear and convincing indications that Congress intended to bar review of the determination “to initiate an inter partes review under this section,” or where the challenge consists of questions closely tied to statutes related to that determination. Cuozzo’s claim does not implicate a constitutional question, nor present other questions beyond “this section.” The regulation requiring the broadest reasonable construction standard is a reasonable exercise of PTO's rulemaking authority, which is not limited to procedural regulations. The purpose of inter partes review is not only to resolve disputes among parties, but also to protect the public’s “paramount interest in seeing that patent monopolies . . . are kept within their legitimate scope.” Congress did not dictate what standard should apply in inter partes review. The broadest reasonable construction standard helps ensure precision in drafting claims and prevents a patent from tying up too much knowledge; PTO has used the standard for more than 100 years. View "Cuozzo Speed Techs., LLC v. Lee" on Justia Law