Analogous art, priority dates, and part-time anticipation are a few of the topics covered in Banner Witcoff’s latest installment of PTAB Highlights.

Indefiniteness in Litigation. District court litigation strategy regarding indefiniteness does not impact the Board’s conclusions regarding obviousness. Amneal Pharmaceuticals LLC et al v. Almirall, LLC et al., IPR2019-00207 (July 23, 2020) (Flax, joined by Mitchell, Paulraj).

Petition Limits. The PTAB did not abuse its discretion in instituting three petitions filed against the same patent owner (deemed appropriate under the circumstances where each petition challenged a different independent claim of the subject patent). Intel Corporation v. VLSI Technology LLC, IPR2019-01198, 01199, 01200 (July 17, 2020) (McGraw, joined by Dang and Pettigrew).

Priority Date. A reference patent is not entitled to the priority date of a provisional application in the absence of demonstrated support in the Petition for the claims in the provisional application. Sirius XM Radio Inc. v. Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung e.V., IPR2018-00690 (July 23, 2020) (Smith, joined by White and Wormmeester).

“Part-Time” Anticipation. “Part-time” satisfaction of software aspects in an apparatus claim is sufficient to establish anticipation. Webpower Inc., v. WAG Acquisition LLC, IPR2016-01238 (July 16, 2020) (Boucher, joined by Jefferson and McNamara).

Definiteness. The understanding of a person of ordinary skill in the art can provide a standard to define claim terms that could otherwise be unclear or ambiguous. U.D. Electronic Corp. v. Pulse Electronics, Inc., IPR2019-00511 (July 22, 2020) (Turner, joined by Bain and McKone)

Analogous Art. No requirement to identify a problem in a primary reference solved by a secondary reference to consider them analogous art. Unified Patents Inc. v. Carrum Technologies, LLC, IPR2019-00481 (July 15, 2020) (Browne, joined by Scanlon and Tornquist). 


As a leader in post-issuance proceedings, Banner Witcoff is committed to staying on top of the latest developments at the Patent Trial and Appeal Board (PTAB). This post is part of our PTAB Highlights series, a regular summary of recent PTAB decisions designed to keep you up-to-date and informed of rulings affecting this constantly evolving area of the law.

Banner Witcoff is recognized as one of the best performing and most active law firms representing clients in inter partes review (IPR) proceedings. To learn more about our team of seasoned attorneys and their capabilities and experience in this space, click here.

Banner Witcoff’s PTAB Highlights are provided as information of general interest. They are not intended to offer legal advice nor do they create an attorney-client relationship.  

Banner Witcoff was part of a litigation team that recently won a motion to dismiss and transfer a patent case for improper venue from the busy patent docket of the Western District of Texas. The team represents The Greenbrier Companies, a leading international supplier of equipment and services to global freight transportation markets.

National Steel Car, based in Canada, filed suit in Waco against Greenbrier alleging infringement of two patents related to gondola rail cars.  In response, Greenbrier, based in Oregon, filed a motion to dismiss or transfer for improper venue.

Following document and deposition discovery limited to venue issues, the Court granted Greenbrier’s motion on July 27, 2020, dismissing the case for improper venue, and transferring the case to the District of Oregon. The ruling is one of the first transfer motions granted by Judge Alan Albright.

The Banner Witcoff team is led by Marc Cooperman, and includes Pieter van Es, Audra Eidem Heinze and Brian Apel.

By: Katie Becker and Alaina Pak[i]

On July 22, the U.S. Court of Appeals for the Federal Circuit decided 2-1 that the Patent Trial and Appeal Board (PTAB) may consider patentability issues outside of 35 U.S.C. §§ 102 and 103 when evaluating substitute claims in inter partes review (IPR) proceedings.

The numerous and complex disputes underlying the Federal Circuit’s decision are distilled in the timeline to the right, which can also be viewed here.­­­­

Affirming the PTAB’s denial of Uniloc’s motion for rehearing, finding that the PTAB may analyze § 101 patent eligibility for proposed substitute claims, the Federal Circuit first analyzed where it lacked jurisdiction.  In doing so, the Federal Circuit found that Uniloc’s appeal and the underlying IPR were not moot. Uniloc’s potential relief on appeal was a certificate of issuance for its substitute claims. Also, consistent with the Manual of Patent Examining Procedure and 35 U.S.C. § 316(d), which allows patentees to propose substitute claims by filing a motion to amend, the PTAB may consider substitute claims after original claims are held invalid by a final federal-court judgment.

Next, the Federal Circuit analyzed the text, structure, and history of the IPR statutes and found that, when reviewing substitute claims in an IPR, the PTAB is not limited by § 311(b) and may consider § 101 eligibility. By the text and plain language of the IPR statutes, § 318(a) requires the PTAB to issue a final written decision “with respect to the patentability of . . . any new claim added under 316(d),” and any § 101 analysis is included in patentability determinations. Furthermore, § 311(b) limits IPR analysis to §§ 102 and 103 when petitioners request the “cancellation” of existing “claims of a patent.” Proposed substitute claims are not “claims of a patent,” and unissued claims cannot be cancelled. As such, substitute claims are not limited by § 311(b).

The Court also reasoned that, based on legislative history, reexamination is meant to be limited to “substantial new questions of patentability,” which are questions that have not yet been considered by the U.S. Patent and Trademark Office (USPTO). Moreover, “[p]roposed substitute claims in an IPR proceeding have not undergone a patentability review by the USPTO” like existing claims have, so the substitute claims necessarily raise “substantial new questions of patentability,” including questions of eligibility under § 101. The Court agreed with the USPTO’s warning that patentees could bypass §§ 101 and 112 requirements and obtain new claims fraught with patentability issues if amendments in IPRs were not also subject to these statutes.

In her dissent, Judge Kathleen M. O’Malley described Uniloc’s appeal as “dead on arrival.” She concluded that Uniloc did not have any “original claims to substitute out for the new claims” after the district court invalidated the challenged claims of the ’960 patent – a decision that was affirmed by the Federal Circuit. She also opined that the majority has shifted the “mammoth task of examining claims” from examiners to Administrative Patent Judges, ignoring the “clear framework of the IPR provisions.”

Key Takeaway: In IPR proceedings, the PTAB still cannot evaluate challenged claims under §§ 101 or 112, but it does have statutory authority to consider §§ 101 and 112 when evaluating substitute claims.

For more information about the content in this alert or if you have questions about the business and legal implications of the Court’s decision, please contact a Banner Witcoff attorney


[i] Alaina Pak is a second-year law student at The University of Southern California Gould School of Law and a 2020 summer associate at Banner Witcoff.

A July 22 Law360 article highlights the latest win of Banner Witcoff client Comcast in an ongoing patent battle with Rovi Guides Inc.

The article notes that the Patent Trial and Appeal Board (PTAB) invalidated a TiVo subsidiary’s patent covering a media guidance app after finding that “Comcast showed the challenged claims were both anticipated and obvious in light of existing technology.”

The July 21 decision, the article adds, “handed Comcast its seventh win in eight challenges to the patents in” two underlying district court cases.”

The Banner Witcoff team representing Comcast in this matter is led by Frederic Meeker and includes Bradley Wright, Michael Cuviello, Jordan Bodner, Chris McKee, Blair Silver, Tom Pratt, Eric Zelepugas and Azuka Dike.

The article, “Rovi Loses To Comcast Again At PTAB As IP Battle Rolls On,” is available online to Law360 subscribers.

A precedential opinion on the Board’s limits to deny a motion to amend, collateral estoppel, and using multiple petitions to address means-plus-function claim terms are a few of the topics covered in Banner Witcoff’s latest installment of PTAB Highlights.

Limits on Denial of Motion to Amend.  The Precedential Opinion Panel (POP) vacated the Board’s denial of a motion to amend based on a ground of unpatentability that the Board raised sua sponte against substitute claims proposed in the motion to amend.  The POP noted that the Board may, in certain rare circumstances, raise a ground of unpatentability that a petitioner did not advance, or insufficiently developed, against substitute claims proposed in opposing a motion to amend, but those circumstances are limited to situations in which the adversarial process fails to provide the Board with potential arguments of patentability with respect to the proposed substitute claims.  The POP further noted that when the Board raises such a new ground of unpatentability, the Board needs to provide notice to the parties, so that the parties can have an opportunity to respond to the new ground of unpatentability. Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, IPR2018-00600, Paper 67 (July 6, 2020) (Boalick, joined by Iancu and Hirshfeld).

Collateral Estoppel.  Asserting additional references or an additional embodiment does not prevent at least some previously litigated issues from being collaterally estopped. Alphatec Holdings, Inc. v. NuVasive, Inc., IPR2019-00361, Paper 59 (July 8, 2020) (Jung, joined by Pothier and McShane).

Multiple Petitions to Address Means-Plus-Function.  The presence of alleged indefinite means-plus-function terms does not justify a second petition.  Google, LLC. v. Uniloc 2017 LLC, IPR2020-00448, Paper 11 (July 9, 2020) (Raevsky, joined by Weinschenk and Ullagaddi).

Motion for Joinder.  The Board granted petitioner’s motion for joinder, joining petitioner as a party to a related IPR, when joinder would not adversely impact the trial schedule, briefing, or discovery in the related IPR.  Lenovo (United States) Inc. et al. v. Neodron Ltd., IPR2020-00682, Paper 10 (June 29, 2020) (Boucher, joined by Quinn and Ogden).

Request for Rehearing.  The Board denied petitioner’s request for rehearing of the decision to deny institution of inter partes review of a patent for failing to prove a reference was prior art, and rejected petitioner’s new arguments that the reference was prior art, when the arguments were not presented in the petition or in an authorized reply to patent owner’s preliminary response, but rather were presented for the first time in the request for rehearing.  Axis Communications AB et al. v. Avigilon Fortress Corporation, IPR2019-00235, Paper 24 (June 26, 2020) (McGraw, joined by Braden and Kaiser).

Balancing the Fintiv Factors. Concerns about inefficiency of presenting arguments in the petition that are the same as the underlying litigation are outweighed by the fact that a trial date has not yet been set and petitioner intends to seek a stay. International Business Machines Corporation v. Trusted Knight Corporation, IPR2020-00323, Paper 15 (July 10, 2020) (Khan, joined by Giannetti and Mcnamara).


As a leader in post-issuance proceedings, Banner Witcoff is committed to staying on top of the latest developments at the Patent Trial and Appeal Board (PTAB). This post is part of our PTAB Highlights series, a regular summary of recent PTAB decisions designed to keep you up-to-date and informed of rulings affecting this constantly evolving area of the law.

Banner Witcoff is recognized as one of the best performing and most active law firms representing clients in inter partes review (IPR) proceedings. To learn more about our team of seasoned attorneys and their capabilities and experience in this space, click here.

Banner Witcoff’s PTAB Highlights are provided as information of general interest. They are not intended to offer legal advice nor do they create an attorney-client relationship.  

Corporate Counsel recently published an article written by Banner Witcoff attorney Kirk Sigmon providing patent owners a trio of strategies to help prevent their patents from being misunderstood.

Kirk notes that while patent publications are technical, the general public has become increasingly interested in them, especially now that there are entire websites dedicated to tracking patent filings of major companies. “This trend, while usually innocuous, can be risky for patent owners, as their patents can be misunderstood, mischaracterized and maligned,” he wrote.

In his article, Kirk offers three strategies for companies and patent owners to consider to avoid a potential public relations blowback based on their patent filings. One of the strategies Kirk highlights is to “draft with non-technical readers in mind, as they can easily misunderstand what you think is fairly clear.”

Click here to download the July 8 article, “PR-Friendly Patents: 3 Strategies to Prevent Patents From Being Misunderstood, Mischaracterized and Maligned.”

A Banner Witcoff team successfully represented Clear-Vu Lighting as petitioner in an inter partes review (IPR) of a patent directed to using blue light to inactivate certain types of bacteria.

Clear-Vu initiated the IPR proceeding against the patent owner, University of Stratchclyde, after its exclusive licensee, Kenall Manufacturing, alleged the patent was infringed. The U.S. Patent Trial and Appeal Board (PTAB) sided with Clear-Vu in a decision issued on July 9, finding that the patent’s claims directed to using blue light to inactivate certain types of bacteria such as MRSA were invalid.

The Banner Witcoff team was led by Brian Emfinger and Binal Patel, and included Matt Becker, Chris Galfano and Blair Silver. Paralegals Carlos Goldie, Yolanda Cameron and Valerie Koleno provided support.

Banner Witcoff is recognized as one of the best performing and most active law firms representing clients in IPR proceedings. To learn more about our team of seasoned attorneys and their capabilities and experience at the PTAB, click here.

Enablement, indefiniteness, and privity are a few of the topics covered in Banner Witcoff’s latest installment of PTAB Highlights.

Enablement of Provisional. IPR institution denied after Board applies a provisional date, disqualifying asserted art. The Board cited Petitioner argument regarding what was known in the art as evidence of enablement for the Patent Owner’s provisional application. GEMoaB Monoclonals GMBH v. University of Maryland, Baltimore, IPR2020-00233, Paper 16 (Jun. 17, 2020) (Hulse, joined by Tornquist and Majors).

Board Declines to Give Advisory Opinion on Indefiniteness.  IPR institution denied because Petitioner provided string cites to alleged structure for means-plus-function claims without specifying alleged structure. Board held it “in effect, seeks an advisory opinion from the Board as to whether the challenged claims are indefinite.”  Callminer, Inc. v. Mattersight, Inc., No. IPR2020-00272, Paper 8 (Jun. 18, 2020) (McShane, joined by Turner and Arbes).

Privity.  IPR institution denied for failure to file within one year of a privy of Petitioner being served with a complaint. Petitioner agreed to indemnify district court defendants. The Board held that Petitioner had the opportunity to control the district court litigation, was in privity with the district court defendants for purposes of § 315(b), and failed to file the Petition within one year of its privy being served with the complaint. Ericsson, Inc. v. Regents of the University of Minnesota, No. IPR2017-01186, Paper 58 (Jun. 19, 2020) (Weinschenk, joined by Bisk and Boudreau).

IPR Instituted based on Fintiv Factors. IPR instituted even when similar issues are being litigated in parallel district court cases. Applying the Fintiv factors, see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential, designated May 5, 2020), the Board determined that the district court litigations were at early stages and that the resolution of the similar issues by the Board in the IPR proceedings may be beneficial to the district court proceedings. Medtronic, Inc. et al v. Teleflex Medical Devices S.A.R.L., IPR2020-00127, Paper 20 (Jun. 26, 2020) (Snedden, joined by Tornquist and Paulraj).  

IPR Institution Denied based on Fintiv Factors. IPR institution denied when the petition presented substantially overlapping invalidity issues presented in a parallel district court proceeding. Applying the Fintiv factors, the Board determined that because the district court and the parties already invested substantial resources for the district court proceeding and because the jury trial was scheduled to begin eleven months before the statutory deadline for the Board’s decision, an institution would likely create a duplication of effort and a potential for inconsistent results. Supercell Oy v. GREE, Inc., IPR2020-00513, Paper 11 (Jun. 24, 2020) (Wieker, joined by Kim and Browne).

IPR Institution Denied for a Lack of Particularity. IPR institution denied when the petition failed to identify with particularity what disclosure was relied on from each of the cited references, failed to describe how the disclosures would be combinable, and failed to describe why the proposed combination would have been obvious to a person ordinary skill in the relevant technology. Although the Board determined that only four out the twenty grounds did not satisfy the particularity requirement, it infected the proceeding sufficiently to deny an IPR institution on all grounds. EIK Engineering Sdn. Bhd. v. Wilco Marsh Buggies & Draglines, Inc.,IPR2020-00344, Paper 7 (Jun. 23, 2020) (Grossman, joined by Browne and Moore).


As a leader in post-issuance proceedings, Banner Witcoff is committed to staying on top of the latest developments at the Patent Trial and Appeal Board (PTAB). This post is part of our PTAB Highlights series, a regular summary of recent PTAB decisions designed to keep you up-to-date and informed of rulings affecting this constantly evolving area of the law.

Banner Witcoff is recognized as one of the best performing and most active law firms representing clients in inter partes review (IPR) proceedings. To learn more about our team of seasoned attorneys and their capabilities and experience in this space, click here.

Banner Witcoff’s PTAB Highlights are provided as information of general interest. They are not intended to offer legal advice nor do they create an attorney-client relationship.  

By Evi T. Christou

On June 30, the U.S. Supreme Court decided by a vote of 8-1, that generic words coupled with “.com” may be eligible for federal trademark registration so long as consumers do not perceive such words as generic.  U.S. Patent and Trademark Office v. Booking.com B. V., No. 19-46, 591 U.S. ___ (2020).

Background

In 2011 and 2012, Booking.com, a digital travel company, sought to federally register “Booking.com” for hotel reservation services with the U.S. Patent and Trademark Office (“USPTO”).  The USPTO denied Booking.com registration under the longstanding rule that generic words (the name of a class of products or services) are not eligible for federal trademark registration.  The USPTO’s Trademark Trial and Appeal Board affirmed, concluding that “Booking.com” was generic because consumers would understand its “primary significance” as “an online reservation service for lodgings” generally. 

Booking.com sought review of the USPTO’s decision in the U.S. District Court for the Eastern District of Virginia and introduced consumer survey evidence and evidence of Booking.com’s reputation, marketing and commercial success to demonstrate that consumers do not view “Booking.com” as a generic name for hotel reservation services, but rather, identify it with Booking.com’s brand.  The district court agreed, holding that Booking.com was not generic for hotel reservation services and was therefore entitled to federal registration.  The U.S. Court of Appeals for the Fourth Circuit affirmed.

Discussion

A longstanding and fundamental doctrine in trademark law provides that generic words are not entitled to trademark protection.  Unlike a trademark, which identifies the source of a good or service, a generic term names a “class” of products or services.  The doctrine protects competitors’ ability to use the terms they need to describe their competing products.  Therefore, even when a long period of exclusive use or an extensive advertising campaign has persuaded consumers to understand a generic term as a brand name, the USPTO has set forth a categorical rule against federal registration of such terms.

In this case, the parties did not dispute that the word “booking” was generic for hotel-reservation services.  Therefore, the question before the Court was whether the combination of a generic word (in this case, “booking”) and “.com” is generic.  The Court ultimately ruled that “Booking.com” as a whole was not generic because consumers do not perceive “Booking.com” to signify a class of online hotel reservation services.  According to the evidence presented by Booking.com in the lower courts, 74.8% of respondents in a consumer survey identified Booking.com as a brand rather than a generic term.  Respondent’s Brief, at 12.  The Court also rejected the USPTO’s categorical rule that adding “.com” to a generic term does not convey additional meaning that would distinguish one provider’s services from those of other providers.  As the Court noted, because only one entity can occupy a particular domain name at a time, a consumer who is familiar with that aspect of the domain name system can infer that “Booking.com” refers to some specific entity and can distinguish it from other online hotel reservation providers.

The Court also rejected the USPTO’s principal concern that affording protection for a term like “Booking.com” would hinder competitors’ ability to use generic marks.  The Court reasoned that anticompetitive harms would be mitigated because trademark infringement requires the trademark owner to show a likelihood of confusion, and consumers would be less likely to be confused by similarities between the generic or highly descriptive components of a generic.com mark and other businesses’ uses of similar words or symbols.  Moreover, the Court noted that even if a trademark owner of a mark comprising a generic term and “.com” sued a competitor whose domain name incorporated the generic term, doctrines such as the fair use doctrine could be replied on in attempt to shield the competitor from liability.

Key Takeaway

  • Carefully designed consumer surveys, dictionary definitions, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning are central to showing how the public perceives trademarks comprising generic words and “.com.”

Managing Intellectual Property has recognized Banner Witcoff and 17 of its attorneys in the 2020 edition of “IP Stars,” a guide to the world’s top intellectual property firms and practitioners.

Nationally, the guide ranked Banner Witcoff for its patent prosecution and Patent Trial and Appeal Board (PTAB) litigation practices. Managing IP also “highly recommended” Banner Witcoff for its trademark practice in Illinois, and for its patent prosecution work in Illinois and Washington, D.C. In addition, the guide recommended the firm in the patent contentious practice area in both jurisdictions.

Earlier this spring, the publication recognized the following 17 Banner Witcoff attorneys as 2020 “IP Stars” in their respective geographic and practice areas:

Marc S. Cooperman, Ross A. Dannenberg, Michael J. Harris, John P. Iwanicki, Sarah A. Kagan, Robert S. Katz, Christopher L. McKee, Timothy C. Meece, Frederic M. Meeker, Helen Hill Minsker, Darrell G. Mottley, Joseph M. Potenza, Christopher J. Renk, Joseph M. Skerpon, Richard S. Stockton, J. Pieter van Es, and Bradley C. Wright.

The “IP Stars” rankings are based on information MIP’s analysts obtain from thousands of law firms, practitioners, and their clients through interviews, surveys, and other research.