The Federal Circuit has denied the request for rehearing on their Arthrex decision from this past fall. As Maier and Maier’s own Steven Kunin describes here, this rejection sets up a probable grant of certiorari on the issue from the Supreme Court.

“The split among the judges provides a roadmap for a probable Supreme Court grant of a petition for certiorari to resolve the constitutionality of the appointment of PTAB judges to decide AIA trial cases.”

Steve goes on to lay out the dissent’s roadmap for issues in the Supreme Court review:

“Title 5’s protections for government employees are desirable and should not be eliminated without Congressional authorization. The USPTO can fix the problem by use of a statutory authorized panel (i.e., the Director, the Deputy Director, and the Commissioner of Patents). Prospective application of the remedy only is wrong. Retroactive application of Arthrex remedies the harm caused by the violation of the Appointments Clause. The original panel’s conclusion that PTAB judges are principal officers is highly questionable. The APJs are really inferior officers because the Director has substantial power over the PTAB, such as ‘to issue binding policy guidance, institute and reconsider institution, personally choose which APJs sit on AIA trials panels, single-handedly designate or de-designate any final written decision as precedential, and convene a panel of three or more members of his choosing to consider rehearing any Board decision’ and the ‘ability to discipline or remove APJs in a constitutionally significant manner.’”

Until the Supreme court has their final say, the USPTO awaits word on what could force significant changes to their operations.

On March 2, 2020, the USPTO published a new notice in the Federal Register clarifying their practice regarding unintentional delay.

“The United States Patent and Trademark Office (USPTO) is clarifying its practice as to situations that will require additional information about whether a delay in seeking the revival of an abandoned application, acceptance of a delayed maintenance fee payment, or acceptance of a delayed priority or benefit claim was unintentional.”

Effective immediately, the USPTO will now require additional information about the unintentional delay from the applicant seeking to:

1. revive an application which has been abandoned for more than two years;
2. file a maintenance fee on a patent which has been expired for more than two years
3.  claim priority or a benefit for an application more than two years after such claim was due.

The USPTO notice also provides that the USPTO may require additional information to any other situation where the unintentional nature of a delay is in question.

The additional information will serve to demonstrate that the entire duration of the delay was unintentional. If any portion of the delay was intentional, the delay does not qualify as unintentional and the request will not be accepted. MPEP 711.03(c).

With the increased scrutiny for revival, diligent care by applicant and practitioners alike takes on heightened importance to adequately protect your patent rights.

On February 21, 2020, the Federal Circuit remanded Ironworks Patents LLC v. Samsung Elecs. Co. back to the Northern District of California due to its flawed claim construction below. The panel of judges found the term ‘camera unit’ to have been misinterpreted to require a battery and external interface device over the specification and convention of the reference numbering.

At issue for the camera unit was U.S. Pat. Nos. 6,427,078 directed to hand-held personal devices and the potential infringement of Samsung mobile phones. Because Samsung’s accused devices did not include a battery or external interface device, the lower court’s claim construction resulted in the two sides stipulating to non-infringement before Samsung took the construction to the Federal Circuit on appeal.

Ambiguity of the Claims

In their analysis of the term ‘camera unit’, the Federal circuit appropriately first looked to the claims themselves. Claim 1 provides that a ‘camera unit’ “comprises a camera, optics, means for processing and for storing, at least one memory unit, and an output”. Claim 36 provides a ‘camera unit’ as “having at least one memory unit.” Finally, claim 73 explains that the ‘camera unit’ “comprises optics, an image sensor, and means for processing and storing”. The various descriptions of the term in each independent claim led the Federal Circuit panel to the specification for clarity.

In Light of the Specification

The Federal Circuit found that the specification supported Ironworks’ construction excluding the battery and external interface from the camera unit. The specification “consistently refers to camera unit 14 which includes camera arrangement 14o (comprising camera 14a and optics 14b) and image processing unit 14c”.

Samsung argued that the description that “the structure of both camera card 15 and camera unit 14 conforms to the block diagram shown in Fig. 5” requires that everything shown in Fig. 5 must be included as part of the ‘camera unit’. The Federal Circuit was not persuaded:

“Figure 5 uses the same numbering convention as the rest of the specification, suggesting camera unit 14 is comprised of elements numbered as 14 (i.e., camera arrangement 14o, which comprises camera 14a and optics 14b, and image processing unit 14c). See ’078 patent at 4:25–29. Other elements in Figure 5 are numbered differently, such as battery 21 and interface 22, suggesting they are not part of the camera unit 14. See id. In fact, the description concerning Figure 5 explains that “camera card 15” (as opposed to “camera unit 14”) includes battery 21 and interface 22. Id. at 4:25–29. On the other hand, a camera unit as expressly defined in the specification includes a camera, optics, and an image processing unit.”[1]

Takeaway

In the instant case, the narrowed interpretation of camera unit increases the likelihood that Ironworks will win its infringement case for those claims. On a practical level, this emphasis on reference number convention emphasizes the need for consistent and clear drafting in the initial filings and the necessary attention to detail needed to adequately protect your innovations.

[1] Ironworks Patents LLC v. Samsung Elecs. Co., 2020 U.S. App. LEXIS 5269 (Fed. Cir. Feb. 21, 2020)

On February 4, 2020, the Federal Circuit issued a precedential decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp.. The decision remanded an inter partes review (IPR) proceeding to the Patent Trial and Appeal Board (PTAB) for review of claims under the proposed novelty and obviousness grounds, despite the fact that the Board had determined the claims to be indefinite.

As part of the America Invents Act in 2012, congress created the IPR proceedings at the PTAB. With this new procedure, petitioners were granted the opportunity to challenge the validity of patents in a more efficient and fast-paced manner. However, IPR’s are limited to institution on grounds for rejection under §102 for anticipation and §103 for obviousness. This notably excludes challenges under §112 for indefiniteness.

In the PTAB proceeding leading to appeal, Samsung had petitioned for review of Claims 1-4, 8, and 11 of U.S. Pat. No. 8,650,591. In the PTAB’s Final Written Decision, the Board invalidated claim 11 for obviousness, but declined to analyze 1-4 and 8. Their reasoning was that the claims were mixed subject matter under IPXL analysis, making the claims indefinite and precluding the Board from continuing the review since indefiniteness extends beyond the congressionally granted scope for IPRs.[1]

On appeal, the Federal Circuit explained that the mere fact that the claims were indefinite does not bar the PTAB from reviewing them under 102 and 103:

Even though the validity of the challenged claims may be subject to question for IPXL-type indefiniteness, that is simply another ground on which the claims might be challenged in an appropriate forum (other than the Board)… It does not necessarily preclude the Board from addressing the patentability of the claims on section 102 and 103 grounds. In the remand proceedings, the Board should determine whether claim 1 and its dependent claims are unpatentable as anticipated or obvious based on the instituted grounds.[2]

With the decision, the Federal Circuit preserves the ability for petitioners to use IPRs to challenge patents more efficiently, even in the case where the claims are indefinite.

[1] IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005)

[2] Samsung Electronics America v. Prisua Engineering Corp., Case No. 19-1169, Document 52 at 20 (Fed. Cir. 2020).

Final briefing from Appellant Arthrex, Inc., Appellees Arthrocare Corp. and Smith & Nephew, Inc., and the Intervening United States Government was filed January 17, 2020 on the request for en banc rehearing. The decision at issue centered on the constitutionality of the appointment process for the PTAB Administrative Patent Judges (APJs) and whether PTAB proceedings as a whole were unconstitutional.

Currently, APJs are appointed by the U.S. Secretary of Commerce. In the original challenge, Arthrex Inc. argued that PTAB proceedings are unconstitutional because this appointment proceeding is insufficient for principal officers. Under the U.S. Constitution, principal officers must be appointed by the President of the United states, with the advice and consent of the Senate.

In the decision last fall, the Federal Circuit severed a tenure provision for the APJ, determining that this would convert them from principal officers to inferior officers. As inferior officers, their appointment by the Secretary of Commerce would be constitutional.

In the briefings filed last week, all parties found flaws in this decision. Arthrex argued that the severance was not sufficient to make the appointments constitutional. Smith & Nephew argued that APJs were already inferior officers and the severance of tenure was unnecessary. Finally, the intervening U.S. found several flaws in the decision, including both the finding that APJs were not subject to sufficient direction or supervision and an alleged misunderstanding of the default federal-employee removal standard.

The three parties’ filings were joined by amici briefs by both the New York Intellectual Property Law Association and the Association for Accessible Medicines, both writing in opposition to the APJs being labeled principal officers and in support of the importance of the PTAB, citing the widespread ramifications of the constitutionality issue.

With the briefings all submitted, the USPTO along with patent owners and petitioners alike await the decision.

This past summer, the Federal Circuit issued an en banc decision against rehearing in Athena Diagnostics, Inc., et al. v. Mayo Collaborative, et al. In the 7-5 decision, there were a staggering 8 separate opinions (four concurring and four dissenting). The common refrain in each was the need for the Supreme Court to address the binding precedent from Mayo.

On January 13, the Supreme Court denied that plea from the Federal Circuit by refusing to grant certiorari on the case.

This is not the only case in which the Supreme Court could have addressed §101, as it also declined to grant certiorari on both HP Inc. v Berkheimer, Hikma Pharmaceuticals, et al. v. Vanda Pharmaceuticals, which raised similar issues. However, it was viewed as the one most likely to be granted certiorari due to the direct plea from the Federal Circuit. In fact, the Solicitor General had even weighed in upon the Supreme Court’s request for views on Hikma, stating that the Court would be better served taking up the issue in Athena. As the Solicitor General emphasized, Athena’s petition “was accompanied by multiple separate opinions articulating different understandings of Mayo and seeking clarification from this Court.” The Court opted instead to deny both petitions.

With the Supreme Court’s declination to weigh in further, the Federal Circuit must place its hopes in the pending legislation in congress to reform subject matter eligibility under §101 and provide clarity to the ongoing situation.

On January 17^th, 2020, Chief Judge Barbara Lynn granted Nintendo’s Motion for Judgment as a Matter of Law, invalidating iLife’s patent claim asserted against Nintendo for its Wii U games and the resulting jury verdict award of $10.1 million.

In the motion, Nintendo raised challenges that the patent (U.S. Pat. No. 6,864,796) for Systems Within a Communications Device for evaluating Movement of a Body and Methods of Operating the Same was invalid as directed to ineligible subject matter under §101 and indefinite under §112 and invalid for lack of enablement and written description under §112.

Despite the jury’s finding that the patent was not invalid, the court found the patent invalid under Alice analysis. At step 1, the court determined that “Claim 1 is directed to the abstract idea of ‘gathering, processing and transmitting…information,’” comparing the claim to those in Elec. Power Grp., LLC v. Alstom S.A.. Meanwhile at step 2, the court found nothing inventive in the claim that could save it for invalidity as ineligible subject matter, rejecting iLife’s identification of inventive aspects disclosed in the written description.

This decision comes at a time when the Supreme Court again rejected the opportunity to provide clarification on §101 subject matter eligibility, having denied certiorari to multiple petitions on the matter including HP Inc. v Berkheimer, Hikma Pharmaceuticals, et al. v. Vanda Pharmaceuticals, and Athena Diagnostics, Inc., et al. v. Mayo Collaborative, et al.