Standing to Appeal an Adverse IPR Decision to the CAFC
WHDA Blogging Team | August 16, 2018
JTEKT Corp. v. GKN Automotive Ltd.
August 3, 2018
Before Prost, Dyk and O’Malley. Opinion by Dyk.
Summary:
JTEKT Corporation (“JTEKT”) instituted an inter partes review (“IPR”) of the patentability of claims 1-7 of U.S. Patent No. 8,215,440 (“the ‘440 patent”), owned by GKN Automotive (“GKN”). The Patent Trial and Appeal Board (“the Board”) issued an adverse decision regarding claims 2 and 3, holding that JTEKT did not show that claims 2 and 3 would have been obvious over the prior art of Teraoka in view of Watanabe. JTEKT appealed the adverse decision to the CAFC. The CAFC dismissed the appeal, finding that JTEKT lacks standing to appeal.
A patent specification need enable full scope of the claimed invention
WHDA Blogging Team | August 10, 2018
Trustees of Boston University. v. Everlight Electronics Co. Ltd., et al.
July 25, 2018
Before Prost, Moore, and Reyna. Opinion by Prost.
Summary
The Federal Circuit reversed the district court’s denial of Defendants’ motion for JMOL that claim 19 of the asserted patent is invalid for failing to meet the enablement requirement of 35 U.S.C. § 112 because the specification fails to enable full scope of the claimed invention.
A catalog disclosed at an event not open to the public may still be considered a prior art under 35 U.S.C. § 102(b)
WHDA Blogging Team | August 8, 2018
GoPro, Inc. v. Contour IP Holding LLC
July 27, 2018
Before Reyna, Wallach, and Hughes. Opinion by Reyna.
Summary
The United States Court of Appeals for the Federal Circuit (the CAFC) found a catalog distributed during a trade show targeting dealers as opposed to the public can still be considered a printed publication under 35 U.S.C. § 102(b). The CAFC stated that the dealers encompassed the relevant audience such that a person ordinarily skilled and interested in the art exercising reasonable diligence should have been aware of the show. Additionally, there were no restrictions placed on the dissemination of the publication, and the catalog was intended to reach the general public. The CAFC therefore vacated the Patent Trial and Appeal Board’s decision and remanded for the Board to consider the merits of the petitioner’s obviousness claims.
連邦巡回控訴裁判所（CAFC）は、販売業者のみが参加可能な展示会で配布されたカタログでも、先行技術文献となると判決した。展示会は、一般に向けたものではなかったものの、販売業者は、当該技術関連者（relevant audience）に含まれ、合理的なデリジェンスの下、当業者や当該技術に関心がある者は、その展示会について知り得たであろうと判示した。また、カタログには配布制限が設けられていなかったため、一般に配布されることを意図した物であったと示した。よって、CAFCは、特許審判部の判断を破棄し、カタログが先行技術文献であるとした上で、自明性について検討するように、審判部に本件を差し戻した。
Post-filing clarification of an ambiguous feature in a pre-filing reference is not sufficient to establish inherent properties of the feature in the earlier publication
WHDA Blogging Team | July 31, 2018
Endo Pharmaceuticals Solutions et al. v. Custopharm Inc.
July 16, 2018
Before Moore, Linn and Chen. Opinion by Chen.
Summary
Custopharm argued that Endo’s patents were invalid due to anticipation or obviousness of three features of a drug and its administration: the dosage, the content of the vehicle, and the administration schedule. The arguments regarding the dosage were rejected on the grounds that they relied on a lesser-used industry treatment guideline. The arguments regarding the vehicle were rejected on the grounds that they relied on an improper inherency position, and that it would not have been obvious to modify the vehicle in view of a reference teaching a similar vehicle in a different context. Finally, the arguments regarding the administration schedule were rejected on the grounds that they relied upon an unsupported claim construction position, as well as an improper combining of the teachings of two references.
« Previous Page — Next Page »
