Tag Archives: IPR

Patent Owner’s Statements in IPR May Constitute a “Disclaimer” of Claim Scope in Litigation

Author: Sean D. Damon
Editor: Jeff T. Watson

In Aylus Networks, Inc. v. Apple Inc., No. 16-1599 (Fed. Cir. May 11, 2017), the Federal Circuit held that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be relied upon to support a finding of prosecution disclaimer and affirmed the district court’s grant of SJ of noninfringement to Apple. Continue reading

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A Broader View of Analogous Prior Art

Author: Jonathan J. Fagan
Editor: Lauren J. Dreyer

In Unwired Planet, LLC v. Google Inc., Nos. 2015-1810 & 1811 (Fed. Cir. Nov. 15, 2016), the Federal Circuit affirmed the PTAB’s holding that the patent was invalid as obviousness, agreeing that a cited prior art reference was analogous prior art. The patented method claimed “farther-over-nearer” search result prioritization. When a mobile device user searched for a service, the claimed device would display nearby service providers but would prioritize paying providers. The Court considered whether a primary reference—Brohoff—in view of a second reference—Galitz—rendered the claim obvious. Brohoff taught a wireless network returning location-based results of service providers, while Galitz discussed methods of displaying and organizing results, such as alphabetization. Continue reading

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IPRs Are Constitutional! No Violation of Article III or Right to a Jury

Author: Christopher B. McKinley
Editor: Lauren J. Dreyer

In MCM Portfolio v. Hewlett-Packard, No. 2015-1091 (Fed. Cir. Dec. 2, 2015), the Federal Circuit held that an inter partes review (IPR) does not violate Article III or the Seventh Amendment.

HP instituted an IPR against MCM.  In arguing for the unconstitutionality of IPRs, MCM relied on the 1898 Supreme Court decision in McCormick Harvesting Machine v. Aultman, where the PTO rejected the original claims during a reissue proceeding that the patentee ultimately abandoned.  Because the reissue was abandoned, the Supreme Court found the PTO’s rejection a nullity, such that only the courts could invalidate the patent. Continue reading

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