PTAB Decision to Institute a CBM is Final and Non-Appealable
| December 17, 2015
SightSound Technologies, LLC v. Apple Inc.
December 15, 2015
Precedential Opinion by Dyk, joined by Lourie and Hughes.
Summary
Apple filed petitions with the PTAB seeking CBM review of patents owned by SightSound under AIA. In the petitions, Apple argued that certain claims of the patents were invalid as anticipated under 35 U.S.C. § 102. The Board instituted CBM review finding that there was a reasonable likelihood that the asserted claims were anticipated or rendered obvious by prior art. However, while Apple’s petitions included alleged facts to support obviousness, the petitions did not specifically allege obviousness over the prior art. The Board initiated review on obviousness grounds anyway. During the CBM proceedings the Board gave SightSound extra time to respond to the obviousness grounds, but SightSound argued that it has been deprived due process to respond to the obviousness grounds on which the CBM review had been instituted. The PTAB entered a final decision based on the obviousness grounds from which SightSound appeals to the CAFC, but the CAFC rules that they are barred under 35 USC 314(d) and 35 USC 324(e) from reviewing the decision to initiate the CBM proceedings.
Tags: 35 USC 314(d) > 35 USC 324(e) > CBM > Covered Business Method > Due process > inter partes review > IPR > Post Grant Review
EXAMINER’S NEW MOTIVATION TO COMBINE REFERENCES MAY CONSTITUTE “NEW GROUND OF REJECTION,” PREVENTING FINALITY OF THE REJECTION
| December 18, 2013
in re Lutz Biedermann – CAFC Opinion
Decided October 18, 2013
Panel: Linn (Opinion author), Moore and O’Malley
Summary
While the Examiner’s motivation to combine prior art references in his rejection was the efficiency of a square thread, the principal reason the Board affirmed the combination of these references was the use of square threads to avoid splaying. The Federal Circuit held that these are different grounds of rejection, and form the bases or underpinnings of different rejections. Therefore, the Federal Circuit found that because the Board made new findings and adopted different reasons to support a new ground of rejection, it had improperly deprived the applicant of both notice and an opportunity to respond.
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Tags: Due process > Motivation > New Ground of Rejection > Notice and Opportunity to Respond > obviousness
Elimination of false marking actions does not violate the Due Process Clause of the U.S. Constitution
| January 3, 2013
Brooks v. Dunlop Manufacturing
December 3, 2012
Panel: Newman, Prost, Moore. Opinion by Prost.
Procedural Summary
Lawyer Brooks sued Dunlop under 35 U.S.C. § 292 for falsely marking a guitar string winder with the number of a patent that had both expired and been found invalid. During the pendency of the law suit, Congress passed the America Invents Act (AIA) that, inter alia, eliminated false marking actions, except under very limited circumstances.
The trial judge therefore dismissed Brooks’ case, despite Brooks’ argument that the AIA’s elimination of false marking cases violated the Due Process Clause of the U.S. Constitution. On appeal, the CAFC agreed with the trial judge and therefore affirmed his dismissal of the case.
Tags: §292 > AIA > America Invents Act > Due process > False marking > qui tam actions > retroactive laws
