Federal Circuit Provides Additional Insight into the Scope of Board Institution-Related Decisions That Are Not Appealable

Just as inter parties review proceedings (“IPRs”) are limited in scope, addressing invalidity based only on patents and printed publications, practitioners should keep in mind that appellate review of United States Patent Trial and Appeal Board (“Board”) decisions from IPRs is similarly constrained. Indeed, much of what occurs in front of the Board is not reviewable by the Federal Circuit. Under 35 U.S.C. § 314(d), a determination by the Board about whether or not to institute an IPR is not appealable. And, in a recent precedential decision, the Federal Circuit found that its inability to review an institution decision can encompass not only the institution decision itself, but also additional Board rulings that occur prior to an IPR’s institution.

In Achates Reference Publishing, Inc. v. Apple Inc., No. 2014-1767 (Fed. Cir. Sept. 30, 2015), the patent holder, Achates, appealed following the Board’s final written decision of unpatentability as to each of Achates’ patents’ claims. The patents themselves were also asserted in co-pending district court litigation, where Achates sued QuickOffice, Inc. and other defendants for infringement. It was not until a year later, however, that Apple, the IPR petitioner, was added to the suit. Continue reading this entry

Delaware Judges Are Finding Patent Claims Indefinite Post-Nautilus

It has been a little more than a year since the Supreme Court rendered its decision in Nautilus, lowering the standard for finding patent claim terms indefinite. Many commentators at that time predicted the decision would have broad implications for all patent cases where definiteness is at issue. Two recent cases from the District of Delaware demonstrate the accuracy of those predictions as judges in Delaware have seized upon the holding in Nautilus to find patent claim terms indefinite. Practitioners asserting or defending against patent claims would do well to acquaint themselves with the strategies and pitfalls raised by the recent decisions to ensure they provide the best advocacy. Continue reading this entry

A Royalty By Any Other Name: Post-Expiration Payments After Kimble v. Marvel

Patent holders and accused infringers will need to continue being creative in drafting license agreements after the Supreme Court’s recent decision in Kimble v. Marvel, No. 13-720, 2015 U.S. Dist. LEXIS 4067, at *6 (June 22, 2015). Kimble upholds the prohibition on charging royalties for use of a patented invention after the patent expires. The rule originated in Brulotte v. Thys Co., 379 U.S. 29 (1964), and has been criticized for restricting the ability of patent holders and potential licensees to reach mutually agreeable terms after arms-length negotiations. Continue reading this entry

Two Bites, Taken Together: Parallel and Serial IPR Petitions

As the body of institution and final decisions in inter partes review (IPR) trials grows, useful trends at both decision stages can be identified. One emerging trend is the relative likelihood that two petitions attacking one or more of the same claims will be more likely granted if filed in parallel (multiple petitions, simultaneously, on the same patent) as compared to when filed serially (multiple petitions, consecutively, on the same patent).

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Federal Circuit: Lack of Bona Fide Intent to Use at the Time of Filing Fatal to Trademark Application

In a recent ruling the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board (TTAB) sustaining an opposition against a trademark application on the grounds that the applicant failed to prove that it had a “bona fide” intent to use the mark in commerce at the time he filed the application. M.Z. Berger & Co. v. Swatch AG, No. 2014-1219, 2015 U.S. App. LEXIS 9276 (Fed. Cir. 2015). While the TTAB has frequently sustained oppositions based on an applicant’s lack of bona fide intent to use the mark in commerce, this is the first time the Federal Circuit has addressed this issue. Continue reading this entry