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In a recent IPR, the PTAB addressed whether a patent application (“Ueda”) filed before the challenged patent (“‘427 Patent”) was considered prior art in light of the Patent Owner’s evidence of an earlier date of invention and the proffered evidence submitted to establish it.

Peloton, as the petitioner, argued that “Ueda was filed on September 19, 2008 [and thus] qualifies as prior art under at least pre-AIA 35 U.S.C. § 102(e).” NEC Corporation, the patent owner, challenged Ueda prior art status by claiming earlier invention, stating that “the inventors of the ‘427 Patent conceived of the invention on or before August 6, 2008, and worked diligently to reduce the invention to practice with the filing of Japan Patent Application No. 2008-294270… on November 11, 2008.”

In addressing the issue, the Board’s analysis focused particularly on the evidence of diligence between conception and reduction to practice, i.e., the critical period. While they found corroborating evidence starting from November 6, 2008, when inventor Kunihiro Taniguchi transmitted a draft application to the Baba law firm, the critical period before this date lacked sufficient documentation.

As the Board explained: “Although Mr. Taniguchi doubtlessly spent substantial time preparing the application he completed on November 6, 2008, there is no corroborating evidence that this work was reasonably continuous during the critical period. As far as the corroborating evidence attests, Mr. Taniguchi could have done no work on the draft until early November, or he could have worked on the draft briefly in August and put it aside until early November.” Continue reading

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In its Institution Decision, the Board addressed whether Trevarthen, a bachelor’s thesis from the University of Wollongong, qualified as prior art against U.S. Patent No. 9,844,206 B2. The Board emphasized that “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent.”

The Board found persuasive evidence that Trevarthen was publicly available through multiple channels. Notably, the thesis was published in the University of Wollongong’s Research Online digital archive, which “ensures that ‘a digital copy’ of each reference… published in the digital repository ‘is available universally on the Internet and located through search engines such as Google and Yahoo.'”

The decision highlighted corroborating evidence from the Internet Archive showing “Trevarthen was available on ‘Research Online on September 7 and 12, 2007, and March 22, 2008.'” The Board also found significant that download statistics indicated “Trevarthen was downloaded hundreds of times before September 2008.”

Particularly compelling was the thesis’s citation in an International Search Report dated March 18, 2008. The Board noted that “a patent examiner’s identification of a reference through a search for the purposes of locating prior art ‘is highly probative evidence of public accessibility.'” Continue reading

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A recent Federal Circuit decision in Lynk Labs v. Samsung has important implications for what types of prior art can be used to challenge patents in inter partes review (IPR) proceedings. The court held that a published patent application can serve as prior art in an IPR as of its filing date, not just its later publication date.

Understanding Pre-AIA 35 U.S.C. § 102(e)(1)

To grasp the significance of the court’s ruling, it’s helpful to take a closer look at pre-AIA 35 U.S.C. § 102(e)(1). This section states:

“A person shall be entitled to a patent unless— (e) the invention was described in—
(1) an application for patent, published under [35 U.S.C. §] 122(b), by another filed in the United States before the invention by the applicant for patent…”

In other words, pre-AIA § 102(e)(1) creates a special prior art rule for published U.S. patent applications. It says that if another inventor files a U.S. application before the invention date of the patent at issue, that application becomes prior art as of its filing date, as long as it eventually gets published.

Notably, this means the application can be prior art before the public ever sees it. Contrast this with the typical rule for “printed publications” under § 102(a) or (b), which only become prior art as of their public accessibility date.

So why did Congress create this unique prior art rule for published applications? The Federal Circuit explained that it wanted to “afford published patent applications a prior-art effect different from the effect given to printed publications in § 102(a) and (b).” Congress likely recognized that patent applications go through examination and are more reliable than other printed publications. Continue reading

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In a recent discovery dispute between Largan Precision Co. and Motorola Mobility LLC, the Northern District of California provided important guidance on two critical issues: the location of plaintiff’s depositions and the application of the apex doctrine for high-level executives.

The Location Battle: Home Court Advantage Prevails

The court’s ruling reinforces a fundamental principle: when you choose to file a lawsuit in a particular district, you better be prepared to show up there. Largan, despite being based in Taiwan, failed to demonstrate any “undue hardship or exceptional circumstances” that would justify conducting depositions in Taiwan rather than California.

The court was particularly unimpressed with Largan’s argument about their witnesses having to “travel thousands of miles and sit for a deposition in a foreign country with a translator.” As Judge Ryu pointed out, this is merely a “conventional inconvenience”–especially in patent litigation where international parties are commonplace.

The Apex Doctrine: Protection vs. Relevance

The more intriguing aspect of the ruling concerns the attempted deposition of Largan’s CEO, Adam Lin. This showcases the delicate balance courts must strike between protecting high-level executives from harassment and ensuring access to relevant testimony. Continue reading

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The PTAB’s decision provides important guidance on when online product listings can qualify as prior art, particularly focusing on the challenges of establishing publication dates for Amazon listings.

Key Legal Standard

The Board emphasized that for an inter partes review, petitioners can only challenge patentability “on the basis of prior art consisting of patents or printed publications.” The key test is whether the reference was “publicly accessible.” As the decision explains, “A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it.”

Amazon Listings as Evidence

The petitioner, Vectair Systems, attempted to use Amazon product listings for a urinal screen showing a “Date First Available” of May 10, 2013 as evidence of prior publication, preceding the challenged patent’s purported priority of November 5, 2014. However, the Board rejected this approach, citing previous decisions that explain why such dates are insufficient:

“[T]he date that a product was listed as first available on a website . . . is not sufficient evidence that the content of the listing, including the photographs depicted therein, were published at that time.”

The Board explained the practical reasoning behind this position:

  • Product listings may be updated over time
  • Photographs of products may change
  • A “first available” date doesn’t prove when specific content appeared

Continue reading

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In a significant patent ruling issued January 6, 2025, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) decisions in Laboratory Corporation of America Holdings v. Ravgen, Inc., Case Nos. IPR2021-00902 and -0154, upholding the validity of claims related to non-invasive fetal DNA testing methods. The case centered on whether there was sufficient motivation to combine prior art references in an obviousness challenge.

LabCorp had challenged Ravgen’s ‘277 patent through inter partes review, arguing that claims directed to analyzing cell-free fetal DNA (cffDNA) using cell lysis inhibitors would have been obvious by combining a 2001 Chiu article with either the Bianchi patent or Rao publication. The PTAB rejected these challenges, finding insufficient motivation to combine the references.

The Federal Circuit’s decision, authored by Judge Lourie, systematically dismantled LabCorp’s attempts to reframe factual determinations as legal errors. “Simply put, Labcorp’s ‘disagreement with the Board’s interpretations… does not amount to a demonstration that the Board somehow failed to use the proper analysis,'” the Court stated, citing Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1347 (Fed. Cir. 2021).

Central to the Board’s analysis was its finding that a skilled artisan would have been discouraged from combining the references because Bianchi’s paraformaldehyde would create unwanted gaps in cell membranes, potentially contaminating the sample with maternal DNA. The Board also noted concerns about formaldehyde’s potential to damage nucleic acids. Even a small amount of DNA leakage – as little as 1% – would have negatively affected the analysis of fetal cell-free DNA. Continue reading

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In a recent Patent Trial and Appeal Board (PTAB) decision, the Board denied institution of an inter partes review (IPR) in Cambridge Mobile Telematics, Inc. v. Sfara, Inc. (IPR2024-00966), highlighting the critical importance of consistent claim construction strategies in patent challenges.

The Core Dispute

The controversy centered on Cambridge Mobile’s approach to construing the claimed “component” terms in U.S. Patent No. 9,333,946 B2. The patent owner, Sfara, Inc., argued for denial based on Cambridge Mobile’s divergent claim construction positions between district court litigation and the IPR petition.

In district court proceedings, Cambridge Mobile advocated for means-plus-function construction under 35 U.S.C. § 112(f), contending the terms were indefinite. However, in their IPR petition, they simply argued for “plain and ordinary meaning” without explaining this shift in position or providing an alternative means-plus-function construction.

Regulatory Framework

The dispute brought Rule 104(b)(3) into sharp focus. This regulation requires IPR petitions to explicitly state how challenged claims should be construed. For means-plus-function claims, petitioners must identify specific portions of the specification describing corresponding structure for claimed functions.

The significance of this requirement is underscored in the USPTO’s Consolidated Trial Practice Guide, which warns that petitioners who fail to address § 112(f) construction “risk failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).” Continue reading

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A recent discovery dispute in the ongoing Boston Dynamics v. Ghost Robotics litigation provides an interesting look at how courts analyze attorney-client privilege in the context of legal memos shared with third parties. In an October 2024 order, Magistrate Judge Burke denied Boston Dynamics’ motion to compel additional discovery related to two legal memos that Ghost Robotics’ attorneys had prepared and shared with third parties.

The key issue was whether Ghost Robotics waived attorney-client privilege by sharing these memos. As the court explained, “The attorney-client privilege protects confidential communications between a client and an attorney relating to the purpose of securing legal advice.” However, this protection isn’t absolute – “If a client voluntarily discloses privileged communications to a third party, the privilege is waived.”

Boston Dynamics argued that the memos contained privileged communications, but Ghost Robotics maintained that “the content of the memos was never protected by the attorney-client privilege, in part because the memos were created with the intent that they were to be immediately disclosed to third parties.”

Judge Burke’s analysis focused on a critical distinction: The court found that “the substance of the memos seems not all that different from the content of a letter or an e-mail that a party’s attorney might send to opposing counsel in a case like this, or of a statement that an attorney might make in a press release or a court filing.” While Ghost Robotics’ attorneys likely had confidential discussions about these issues, the memos themselves didn’t reveal privileged communications. Continue reading

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In a recent Patent Trial and Appeal Board (PTAB) decision, the particularity requirement emerged as a critical factor in determining whether to institute an inter partes review (IPR). The case, involving IKEA Supply AG’s challenge to Everlight Electronics’ LED patent, highlights how failing to meet this requirement can doom even technically meritorious patent challenges.

Understanding the Particularity Requirement

The particularity requirement, codified in 35 U.S.C. § 312(a)(3), demands that IPR petitions identify “with particularity, each claim challenged, the grounds on which the challenges to each claim are based, and the evidence that supports the grounds for challenge to each claim.” As the Federal Circuit emphasized in Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.'”

Why Particularity Matters

The requirement serves multiple purposes: it ensures efficient review, provides fair notice to patent owners, and prevents what some practitioners call “kitchen sink” petitions that overwhelm both the Board and respondents with numerous alternative theories. Continue reading

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The U.S. Patent Trial and Appeal Board (PTAB) has denied Petitioner’s Shenzhen Waydoo Intelligence Technology Co., Ltd.’s petition for inter partes review (IPR) and accompanying motion for joinder in a case involving MHL Custom, Inc.’s Patent No. 9,359,044 B2.

The decision, issued on December 17, 2024, centers on Waydoo’s attempt to join an existing IPR challenge (IPR2024-00086) filed by Foil Boarding Company. The Board’s denial primarily stemmed from two key factors: Waydoo’s previous unsuccessful challenge to the patent’s validity in district court and the company’s unexplained three-and-a-half-year delay in seeking IPR review.

Importantly, Waydoo had already contested the ‘044 patent’s validity in a previous district court case using substantially similar grounds, including the same prior art references (Evolo Report and Woolley). In that case, a jury not only upheld the patent’s validity but also found that Waydoo had willfully infringed it.

The Board emphasized that Congress intended inter partes reviews to serve as alternatives to district court litigation, not additional venues for repeated challenges. The decision referenced the House Report on the America Invents Act, which explicitly warned against using IPR proceedings as “tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks.”

The Board found particular significance in Waydoo’s failure to explain why it waited more than three years after being served with the initial infringement complaint before filing its IPR petition. Under normal circumstances, petitioners must file IPR challenges within one year of being served with an infringement complaint, though this deadline can be waived for joinder requests. Continue reading