Arthrex and Reexamination

Virnetx Inc. v. Cisco Systems, Inc., Appeal No. 2019-1671 (Fed. Cir., May 13, 2020).

Photo of John P. Isacson
John P. Isacson

Inter partes reexamination was a non-trial procedure that allowed third parties to participate in patent reexamination, and has now been replaced by inter partes and post-grant reviews. Inter partes reexaminations were conducted before a panel of examiners, and then subject to review by the PTAB in an appeal capacity. Here, Cisco and the Director of the USPTO sought rehearing of a decision that extended the Arthrex doctrine to inter partes reexaminations. Continue reading “Arthrex and Reexamination”

What Belongs to the Director Stays With the Director

Honeywell Int’l v. Arkema, Inc., Appeal No. 2018-1151, -1153 (Fed. Cir., October 1, 2019)

Photo of John P. Isacson

John P. Isacson

Arkema filed two petitions for post-grant review of a Honeywell patent pertaining to fluoroalkene compounds used in refrigerator systems.  During the proceedings, Honeywell discovered that it had an error in its priority claim and sought authorization from the Board to file a motion for leave to petition the Director for a Certificate of Correction.  The Board denied authorization to file a motion on the grounds that Honeywell had not satisfied 35 USC §255.

The Federal Circuit vacated the Board’s decision and stated as follows:

On the merits of Honeywell’s appeal, we conclude that the Board abused its discretion by assuming the authority that 35 U.S.C. § 255 expressly delegates to the Director: to determine when a Certificate of Correction is appropriate.

Slip op. at 6.

Section 255 does not grant the Board authority to determine whether a mistake in an issued patent is of “minor character” or “occurred in good faith.” 35 U.S.C. § 255. That authority is expressly granted to the Director. Id. The Director has not delegated its Section 255 authority to the Board, but has instead promulgated procedures by which patentees may seek the Board’s leave to petition the Director for a Certificate of Correction.  37 C.F.R. § 1.323; MPEP § 1485.

Slip op. at 7.

In past practice, the Board had reviewed motions for leave to seek a Certificate of Correction to determine whether the Patent Owner established a sufficient basis to seek correction, which the court approved of.  Here, the Federal Circuit faulted the Board for not even allowing Honeywell to file the motion.  Slip op. at 8.  The Federal Circuit considered the refusal of authorization to be an abuse of discretion. Slip op. at 9.  The Federal Circuit vacated and remanded the decision, and instructed the Board that it “should authorize Honeywell to file a motion….”   Slip op. at 10-11.

Supreme Court Holds That AIA On-Sale Bar Applied to Secret Sales

By Reza Mollaaghababa
In an inter-partes review proceeding (IPR), a challenger can rely only on patents and printed publications to challenge the validity of a patent claim. In contrast, in a post grant review (PGR) proceeding, a challenger can rely on any ground related to patentability, including prior sale, to challenge a patent claim.  In particular, 35 U.S.C. §102(a)(1) bars a person from receiving a patent on an invention that was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” Continue reading “Supreme Court Holds That AIA On-Sale Bar Applied to Secret Sales”