For many years, the USPTO’s Patent Trial and Appeals Board has been viewed as a Star Chamber which ritually invalidates patents. More recent experience suggests that the PTAB is no longer necessarily a place where patents go to die. Two cases from this summer are the topic of this post. In both cases, the PTAB initially sided with the challenger and initiated IPR, but in the trial phase the PTAB issued final written decisions siding with the patent owner. On appeal, the Court of Appeals for the Federal Circuit sided with the patent challenger and held that the patent claims should be invalidated. Notably, both CAFC decisions are written by Judge Taranto, who prior to joining the CAFC had a private practice handling patent litigation, mostly appeals. Judge Taranto seems to take a pretty hard view of validity.
After Medtronic sued its competitor Axonics for patent infringement, Axonics challenged various claims of the Medtronic patents for obviousness in inter partes reviews (IPRs). In both IPRs, the PTAB concluded that Axonics had failed to prove any of the challenged claims unpatentable. Axonics appealled. The CAFC vacated and remanded in a precedential opinion, holding that the PTAB erred in its obviousness analysis, and because the errors could not be regarded as harmless.
MacNeil IP LLC v Yita LLC was also an appeal of two related IPRs. The two MacNeil patents at issue relate to trays that are installed in a car or truck to protect the vehicle from wet or muddy feet. MacNeill sells these products under its WeatherTech brand.
After MacNeil sued its competitor Yita for patent infringement, Yita challenged various claims of the MacNeil patents for obviousness in IPRs. In one of the IPRs, the PTAB concluded that—although a relevant artisan would have been motivated to combine the prior art asserted by Yita, and would have had a reasonable expectation of success in combining the teachings of the asserted prior art references to arrive at each challenged claim—MacNeil’s evidence of secondary considerations was compelling and indicative of non-obviousness. The CAFC reversed, showing again how hard it is to prove secondary indicia of non-obviousness. In the second IPR, the PTAB agreed with Yita that some but not all of the claims were obvious. The CAFC affirmed the second case. This was also a precedential opinion.
About the author
Steve Sereboff, the author of this post, will lead a discussion of these ethical issues at our weekly SoCal IP Institute Meeting on July 31, 2023 which will qualify for 1 hour of ethics MCLE for the State Bar of California.