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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Guest Article: A Critical Analysis of the Inter Partes Review Statute

Linked below is an article by Matthew A. Smith, well-known for his work in the field of reexamination, analyzing the new Inter Partes Review statute in detail.

Some of the most interesting points from the article include:

  • The estoppel provisions have changed substantially over inter partes reexamination, and may have a larger impact on co-pending litigation.  Specifically, the estoppels will attach after the PTAB decision, not after the issuance of a reexam certificate as is currently the case.  They will also attach regardless of the outcome of the inter partes review, whereas currently there is estoppel only if the requester loses in the reexamination.
  • The timing of an inter partes review will be a bit more complex than "1 year to a final decision", especially when one takes multiple co-pending proceedings into account.
  • The statute appears to be riddled with other ambiguities, such as the requirement for a "preliminary response" both before and after institution of the inter partes review, the apparent requirement for the PTO to shut down an inter partes review after it issues a PTAB-level decision, the failure to account for the fact that proceedings might only be directed to a subset of claims in a patent, and the inconsistent use of the terms "Petitioner", "Real party in interest" and "Privies of the petitioner".

A PDF version of the article can be found here.


BPAI Agrees With Examiner's Broadest Reasonable Interpretation of "Disposed Thereon"

Ex Parte Newby (BPAI Nov. 10, 2011)

In this decision concerning a rejection of claims directed to an asymmetrical carton for containing and dispensing a roll of sheet material, the BPAI agreed with the Examiner's broadest reasonable interpretation of the claim term "disposed thereon" and affirmed the rejection of claims.

Claim 1 of the application recited the limitation "one of said substantially planar side panels having at least one blade disposed thereon".  The Examiner relied on a dictionary definition of "dispose" as meaning "arrange" as the Examiner determined the specification did not provide a special definition of "disposed thereon."  The Examiner then determined that a prior art reference disclosing a carton made from paperboard that included a front panel with a serrated free edge disclosed that the serrated free edge was disposed upon the top edge of the side panel.

The appellants argued to the BPAI that "the claim language describing at least one blade disponsed upon a side panel is not subject to interpretation to inlcude a panel having an integral serrated edge which is not separable from the panel itself."  The appellants went on to argue that the prior art reference did not disclose a blade disposed on the edge, but instead disclosed a blade integral to and inseparable from the edge.

The BPAI disagreed with the appellants, finding that the specification did not suggest a specific definition to the term "disposed thereon" and therefore it was appropriate to consult a general dictionary to determine the broadest reasonable interpretation of the claim to one having ordinary skill in the art.  In this case, the dictionary selected (Merriam Webster's Collegiate Dictionary) defined "dispose" as "arrange" and the BPAI agreed with the Examiner "that the claim language does not preclude the blade from being integral with the one substantially planar side panel."


Federal Circuit Construes Claim Term Consistenly With the Object of the Invention

Stone Strong, LLC v. Del Zotto Products of Florida, Inc. (Fed. Cir. Oct. 17, 2011) (nonprecedential)

In this case, the Federal Circuit construed a claim term consistently with the object of the invention.  The patents in suit related to pre-cast concrete blocks and a system and method for making pre-cast concrete blocks for use in constructing retaining walls.  One issue on appeal was the proper construction of the claim term "alignment device."  Each asserted independent claim required a "lift and alignment device" or an "alignment device" to align a subsequently-placed block with respect to the first block.

The plaintiff argued that the recess on the bottom of the block can serve an alignment function regardless of its size in relation to the lift hooks on the top of the block, so long as the recess is shorter than the width of the bock from the face to the rear.  The defendant argued that the "the lifting devices must substantially fill the recess ... in order for the block to come to rest in an aligned state."

The Federal Circuit largely agreed with the defendant's construction, ultimately construing the alignment limitation "to require that when the lift loops of one block are inserted into the recess on the bottom of another, there is no enough play to allow the blocks to be misaligned without further manual adjustment."  In support of this construction, the Federal Circuit looked to the object of the invention, which it described as "to achieve alignment of retaining wall blocks, including setback, without requiring manual alignment as the block is lowered or adjustment after it has been placed."  The court then determined that plaintiff's construction was inconsistent with the object of the invention in that the alignment function "cannot be served if the recess is nearly as large as the width of the block itself ... [w]ith such a large recess, there would be too much play between the rings and the outer edges of the recess to automatically align the block with respect to another."

The Court went on to reverse the district's court finding of nonobviousness, finding that "all the relevant elements of the claimed invention ... existed in the prior art" and because the patents in suit "represent no more than the predictable use of prior art elements to address a known problem, their claims are obvious as a matter of law." 


Federal Circuit Denies Rehearing En Banc for Retractable Technologies v. Becton, Dickinson and Co.

Retractable Technologies, Inc. v. Becton, Dickinson and Co. (Fed. Cir. Oct. 31, 2011)

The Federal Circuit has denied Retractable Technologies' petition for panel rehearing and rehearing en banc regarding claim construction issues.  Three members of the Court dissented.

Judge Moore, joined by Judge Rader, wrote, in part:

Claim construction is the single most important event in the course of a patent litigation.  It defines the scope of the property right being enforced, and is often the difference between infringement and non-infringement, or validity and invalidity.  Despite the crucial role that claim construction plays in patent litigation, our rules are still ill-defined and inconsistently applied, even by us.  Commentators have observed that claim construction appeals are "panel dependent" which leads to frustrating and unpredictable results for both the litigants and the trial court ... Nowhere is the conflict more apparent then in our jurisprudence on the use of the specification in the interpretation of claim language ... This case is a good vehicle to address two important claim construction principles:  the role of the specification in construing the claims and whether deference should be given to the district court in the claim construction process.

Judge O'Malley wrote, in part:

Post-Markman, district judges have been trained to--and do--engage in detailed and thoughtful analysis of the claim construction issues presented to them.  They conduct live hearings with argument and testimony, sometimes covering several days, and certainly always extending beyond the mere minutes that courts of appeals have to devote to live exchanges with counsel.  Simply, "the trial court has tools to acquire and evaluate evidence that this Court lacks."  While no one would urge deference to cryptic, unthinking rulings born of little or no real inquiry, where, as here, the trial court has thoroughly vetted all relevant aspects of the claim constructions at issue, "careful consideration of the institutional advantages of the district court would counsel deference."


An exercise that requires review of often extensive documentary evidence, and, in some cases, expert evidence for purposes of "capturing the scope of the actual invention" sounds tellingly like a factual inquiry, not a legal one.  The fact that this inquiry is to be undertaken from the point of view of one skilled in the art at the time of the invention, moreover, underscores this conclusion.


It is time we stop talking about whether we should reconsider the standard of review we employ when reviewing claim construction decisions from district courts; it is time we do so.

Prior coverage of the July 2011 panel decision can be found here.


District Court Rejects Constitutional Challenge to New False Marking Statute

Serius Innovative Accessories, Inc. v. Cabela's Inc. (S.D. Cal. Oct. 19, 2011)

In this case, the district court rejected a challenge to the constitutionality of the amended False Marking Act, 35 U.S.C. § 292, on grounds of violating both the Due Process and the Takings Clauses of the U.S. Constitution.

The district court found that "Congress enacted AIA [the America Invents Act] for a legitimate purpose, and Congress clearly intended for AIA to apply retroactively", thereby finding that the false marking provisions of the AIA did not violate Due Process.

The district court went on to explain that "a successful Takings Clause argument involves a taking of 'vested property rights' 'for public use'" and "[t]here is no showing of a public use associated with [defendant's] assertion that AIA destroyed its false marking claim, or that [defendant] would prevail on its false marking claim."  The court then denied the defendant's Takings Clause challenge to the false marking provisions of the AIA.

Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated periodically with new false marking cases as well as status updates on pending cases.  A downloadable PDF chart is available on this page as well including information on the specific patents and products at issue in each litigation.  Gray on Claims is also providing information on false marking settlements.  Other writings on false marking can be found here


Federal Circuit Instructs District Court to Dismiss False Marking Case

FLFMC, LLC v. Wham-O, Inc. (Fed. Cir. Oct. 19, 2011) (nonprecedential)

Today, the Federal Circuit dismissed the Wham-O appeal as moot in light of the amendments to the false marking statute by the America Invents Act.  The court further ordered the case remanded with instructions to dismiss.  In a footnote, the court noted that "[t]he parties do not challenge, and this court does not address, the constitutionality of the retroactive application of the amendments to § 292."

Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated daily with new false marking cases as well as status updates on pending cases.  A downloadable PDF chart is available on this page as well including information on the specific patents and products at issue in each litigation.  Gray on Claims is also providing information on false marking settlements.  Other writings on false marking can be found here


Eastern District of Texas Dismisses False Marking Case Sua Sponte in Light of America Invents Act

Kilts Resources LLC v. Uniden Direct in USA, Inc. (E.D. Tex. Sept. 19, 2011)

In this case, Judge Ward in the Eastern District of Texas dismissed sua sponte a false marking case without prejudice in light of the America Invents Act.  The court stated:  "The statute notes that the amendments made shall apply to all cases that are pending on or commenced on or after the Act's date of enactment, which was September 16, 2011.  The Court has reviewed Plaintiff's complaint in light of the new amendments to the law.  In accordance, the Court holds that Plaintiff's complaint is DISMISSED for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6).  This dismissal is without prejudice for Plaintiff to re-file its complaint in the event Plaintiff can prove it has suffered a 'competitive injury' and it can satisfy the other requirements under the statute."

A copy of the court's order can be found here.

Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated daily with new false marking cases as well as status updates on pending cases.  A downloadable PDF chart is available on this page as well including information on the specific patents and products at issue in each litigation.  Gray on Claims is also providing information on false marking settlements.  Other writings on false marking can be found here.


Interaction Between Claim Construction and Patent-Eligible Subject Matter

Ultramercial, LLC v. Hulu, LLC (Fed. Cir. Sept. 15, 2011)

In this case, the Federal Circuit reversed the district court's finding that the patent-in-suit, related to a method of distributing copyrighted products over the Internet where the consumer receives a copyrighted product for free in exchange for viewing an advertisement and the advertiser pays for the copyrighted content, did not claim patent-eligible subject matter. 

While the Court did not ultimately use claim construction in making its Section 101 determination, Chief Judge Rader, writing for the panel, did provide commentary on the interaction between claim construction and Section 101:

This court has never set forth a bright line rule requiring district courts to construe claims before determining subject matter eligibility.  Indeed, because eligibility is a "coarse" gauge of the suitability of broad subject matter categories for patent protection, Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir. 2010), claim construction may not always be necessary for a § 101 analysis.  See, e.g., Bilski v. Kappos, 130 S. Ct. 3218, 3231 (2010) (finding subject matter ineligible for patent protection without claim construction).  On many occasions, however, a definition of the invention via claim construction can clarify the basic character of the subject matter of the invention.  Thus, claim meaning may clarify the actual subject matter at stake in the invention and can enlighten, or even answer, questions about subject matter abstractness.


Federal Circuit Finds Construction of Term Unnecessary

Respironics, Inc. v. Invacare Corp. (Fed. Cir. Jul. 8, 2011) (nonprecedential)

In this case, the Federal Circuit determined that, as it held the two patents in suit were anticipated by a prior art reference, "it is not necessary for us to address Respironics' appeal relating to the construction of 'predetermined,' as the dispute over the construction of that term is relevant only to infringement and not to validity."  The patents in suit related to providing "positive pressure support therapy" to patient suffering from sleep apnea, more specifically "a method and a device that reduces the magnitude of the positive pressure that is provided to the patient during the expiratory phase of the breathing cycle as compared to the magnitude of the pressure that is delivered during the inspiratory phase."


Debate Continues Concerning Importing Limitations From Specification Into Claims

Retractable Techs., Inc. v. Becton, Dickinson and Co. (Fed. Cir. July 8, 2011)

In this case, the patent at issue related to retractable syringes, which are medical syringes that feature a needle that retracts into the syringe body after the syringe is used.  Judge Lourie, writing for the majority, reversed the district court’s claim construction and found the term “body”, as used in the patent, required a one-piece structure, rather than including multiple-piece structures.  The majority opinion explained that “none of the [patent] claims expressly recite a body that contains multiple pieces” and the specification distinguished “prior art syringes comprised of multiple pieces” while not disclosing a multiple-piece body as part of the claimed invention. 

In dissent, Judge Rader opined that the majority had improperly imported limitations from the specification into the claims, finding the ordinary and customary meaning of the term “body” “does not inherently contain a one-piece structural limitation”, “neither the claim language or the written description evinces intent by the patentee to limit the scope of ‘body’ to one-piece bodies”, and using the doctrine of claim differentiation as two dependent claims recited a one-piece body limitation.

In a short concurrence, Judge Plager noted that “However much desired by the claim drafters, who want claims that serve as business weapons and litigation threats … the claim cannot go beyond the actual invention that entitled the inventor to the patent.  For that we look to the written description. … I have written elsewhere about the curse of indefinite and ambiguous claims, divorced from the written description, that we regularly are asked to construe, and the need for more stringent rules to control the curse. … I understand how a perfectly competent trial judge can be persuaded by the siren song of litigation counsel to give the jury wide scope regarding what is claimed.  But it is a song to which courts should turn a deaf ear if patents are to server the purposes for which they exist, including the obligation to make full disclosure of what is actually invented, and to claim that and nothing more."