Weekly IP Takeaways

In IP Blog

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. Continuing a unique line of case law concerning the opinions of the Patent Trial and Appeal Board (“PTAB”) being rendered by administrative patent judges (APJ) who were not constitutionally appointed, the Federal Circuit has now ruled that appeals of ex parte patent examinations decisions to the PTAB are subject to being vacated and remanded if the appeals of the examination are reviewed by unconstitutionally appointed APJs. This decision follows previous decisions by the Federal Circuit in the Arthrex and VirnetX cases. In the present case, the Federal Circuit vacated and remanded the PTAB decision reviewing a patent’s examiner’s final rejection of the claims in the appellant’s patent applications. The takeaway here is that it may be possible to get a second bite of the apple if a PTAB panel affirms a patent examiner’s rejection of one’s patent application.

2. The Federal Circuit affirmed Central District of California Judge John A. Kronstadt’s order dismissing antitrust claims where the plaintiff had been given multiple opportunities to amend its complaint to state a plausible claim for relief under the antitrust laws. Finding that “Power Analytics never provided a plausible statement of relief,” the Federal Circuit quipped that the district court had demonstrated “the patience of a first grader’s piano teacher” with the plaintiff. In short, Power Analytics’ attempts to stop its competitors seems to have short circuited (Power Analytics makes power grid software). The takeaway here is to only assert claims that are factually and legally viable.

3. The Federal Circuit affirmed a number of aspects of Eastern District of Texas Judge Rodney Gilstrap’s ruling in a JMOL after a jury trial, including finding that the asserted patents were not invalid under Section 101/Alice. One aspect of the JMOL the Federal Circuit reversed concerned pre-suit damages that had been awarded by the jury and upheld by Judge Gilstrap. The Federal Circuit noted that the plaintiff had not marked its products with the patent number and was thus not entitled to pre-suit damages. The plaintiff argued that its method patents did not require marking in order to support an award of pre-suit damages, but the Federal Circuit rejected that argument as well. The takeaway here is to make sure you mark patented products with the applicable patent number (or virtually mark) as soon as possible after issuance of the patent.