Recent Proposal for Section 101 Reform

By John Isacson

A bipartisan group of Senators and Representatives recently released a framework for amending Section 101.  The group includes Senator Chris Coons (D-Del.) and Senator Thom Tillis (R-N.C.), as well as Representative Doug Collins (R-Ga.), Representative Hank Johnson (D-Ga.) and Representative Steve Stivers (R-Ohio).  As Senator Coons stated in a press release: Continue reading “Recent Proposal for Section 101 Reform”

CAFC Reverses PTAB on §315(b) Petition Time Bar Interpretation

By Reza Mollaaghababa
Section 315(b) of the America Invents Act (AIA) provides that an inter partes review (IPR) proceeding “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”

Recently, in Click-to-Call Technologies, LP v. Ingenio, Inc., Yellowpages.com, LLC, the CAFC reversed the Board’s interpretation of §315(b) in an IPR filed against U.S. Patent No. 5,818,836 that the voluntary dismissal of a civil action related to this patent, which has been served on the defendants more than one year prior to the filing of the IPR, negated the one-year bar instituted by §315(b) because such a voluntary dismissal nullified the effect of the service.  In reaching this conclusion, the Board emphasized that “the Federal Circuit consistently has interpreted the effect of such dismissals as leaving the parties as though the action had never been brought.”

The CAFC did not agree and held that “the statute does not contain any exceptions or exemptions for complaints served in civil actions that are subsequently dismissed, with or without prejudice.  Nor does it contain any indication that the application of § 315(b) is subject to any subsequent act or ruling.  Instead, the provision unambiguously precludes the Director from instituting an IPR if the petition seeking institution is filed more than one year after the petitioner, real party in interest, or privy of the petitioner ‘is served with a complaint’ alleging patent infringement.  Simply put, § 315(b)’s time bar is implicated once a party receives notice through official delivery of a complaint in a civil action, irrespective of subsequent events.”

The CAFC noted that this reading of §315(b) is confirmed by its en banc decision in Wi-Fi One, in which the CAFC had held that the provision sets forth a “condition precedent to the Director’s authority to act,” based on “timely filing of a petition.”

In the present case, the Petitioners also argued that a reexamination of the patent at issue, which was conducted after the date of the service and before the filing of the IPR, had resulted in the issuance of significantly different claims relative to the original claims of the ‘836 patent, and hence had resulted in a different patent for the purposes of §315(b).  The CAFC was not, however, persuaded by this argument. The CAFC emphasized that “Unlike reissue, reexamination does not result in the surrender of the original patent and the issuance of a new patent.”

Finally, Petitioners argued that certain of the petitioners were not subject to the time bar of §315(b) because they were not in privity with the patent owner at the time of service of the civil action.  The CAFC rejected this argument and emphasized that §315(b) applies “petition-by-petition, not petitioner-by-petitioner, with the collection of petitioners on a single petition treated as a unit indistinguishable from each member of that collection.”

When Can Common Sense be Relied Upon to Find an Invention Obvious?

By Alicia Palladino
All patent practitioners recognize that a single prior art reference can be used to reject claims in an obviousness rejection. However, the issue is whether the Patent Office must provide additional evidence, above and beyond the sole prior art reference, when using common sense to conclude the invention is obvious. Recently, the Federal Circuit held that the Board misapplied the law on the permissible use of common sense in an obviousness analysis. Arendi S.A.R.L. v. Apple Inc., No. 2015-2073, 2016BL258032, 5 (Fed. Cir. Aug. 10, 2016).

The Arendi case began as an IPR petition filed December 2, 2013 by Apple Inc., Google, Inc., and Motorola Mobility LLC claiming U.S. Patent No. 7,917,843 (the ‘843 Patent), owned by Arendi S.A.R.L., was invalid as obvious. The IPR was instituted and the Board issued an opinion on June 9, 2015 finding the claims unpatentable as obvious. On appeal, the Federal Circuit reverses the Board.

As described by the patent owner, the “’843 Patent is directed, among other things, to computer-implemented processes for automating a user’s interaction between a first application, such as a word processing application or spreadsheet application, on the one hand, and a second application, such as contact management application having a database, on the other.” IPR2014-00208, Paper 6 page 1. The sole prior art reference used to invalidate the ‘843 Patent as obvious was U.S. Patent No. 5,859,636 (“Pandit”). Pandit taught recognizing different classes of text in a document and providing suggestions based on it.

The Federal Circuit acknowledged that there is a place for common sense, common wisdom, and common knowledge in the obviousness analysis. However, Judge O’Malley provides three caveats when applying common sense in these instances.

First, common sense is acceptable to use to provide a motivation to combine, not to supply a missing claim limitation. O’Malley noted the suggestion test described in Dystar. The suggestion test does not require that an explicit teaching to combine be found in a particular prior art reference, the motivation to combine “may be found in the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved. When not from the prior art references, the ‘evidence’ of motive will likely consist of an explanation of the well-known principle or problem-solving strategy to be applied.”. Dystar Textilfarben GmbH v. Patrick Co., 464 F.3d 1356, 1366 (Fed. Cir. 2006).  The Dystar decision further explained that an “implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient…In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references.” Id. at 1368. Continue reading “When Can Common Sense be Relied Upon to Find an Invention Obvious?”