Category: Decisions

Federal Circuit Provides Two-Part Analysis for Determining Reviewability of PTAB Institution Decisions

Author: Anthony A. Hartmann
Editor: James D. Stein

The Federal Circuit in Husky Injection Molding Systems, Inc. v. Athena Automation Ltd., No. 2015-1726 (Fed. Cir. Sep. 23, 2016) recently dismissed Husky’s appeal from a final written decision in IPR. The court found it “lack[ed] jurisdiction to review the Board’s determination on whether assignor estoppel precludes it from instituting inter partes review.” Slip op. at 19.

Assignor estoppel generally prevents an assignor of a patent from later asserting that the patent is invalid. Here, a co-inventor of the patent at issue was Husky’s former owner and president, who had assigned the patent to Husky. After assigning the patent, he formed Petitioner Athena and alleged unpatentability of the patent in IPR. The Board found that assignor estoppel does not apply in an IPR, instituted review, and found certain claims unpatentable.

On appeal to the Federal Circuit, after reviewing the prevailing case law, the court identified a two-part framework to determine whether it may review a challenge to an institution decision:

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Federal Circuit Clarifies the Burden of Proof in Magnum Oil

Author: Shayda Shahbazi*
Editor: Aaron J. Capron

In its recent decision, In re Magnum Oil Tools International, No. 2015-1300, the Federal Circuit clarified the burden of proof for IPR proceedings. In particular, it held that the PTAB improperly shifted the burden of proof to the patent owner to disprove obviousness.

When filing its petition with the PTAB, McClinton argued that the claims at issue would have been obvious over a first and second set of prior art. While McClinton and its expert appeared to have fully addressed the first set of prior art, they only “incorporated by reference” the arguments from the first set onto the second set of prior art. In responding, patent owner Magnum contended, among other things, that McClinton’s analysis for the second set of prior art failed to “specify where each element of the claim is found” and to describe how a skilled artisan would have modified the second set of prior art. Despite these shortcomings, the PTAB found that McClinton had established a reasonable likelihood of success based on only the second set of prior art and instituted the IPR. Relying on that analysis in the Final Written Decision, the PTAB held that the claims at issue were invalid as being obvious over the second set of art.

Subsequently, McClinton and Magnum settled the dispute, in which McClinton agreed to not participate in any appeal.

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PTO Designates New Precedential Opinions on Additional Discovery, One-Year Time Bar, Substitute Claims, and Interpretation of § 312(a)(2)

Author: Alex Kwan-Ho Chung, Ph.D.
Editor: Jason E. Stach

On Tuesday, May 10, 2016, the PTAB designated the following five decisions as precedential, providing authority on various procedural issues including: criteria for additional discovery; the nature of service triggering the one-year time bar; the patentee’s burden to demonstrate the patentability of substitute claims; and an interpretation of § 312(a)(2).

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