As noted in our post of April 23, 2015, in Intri–Plex Technologies, Inc. and Mmi Holdings, Ltd., v. Saint–Gobain Performance Plastics Rencol Limited, IPR2014–00309 (Paper 83), the Board relied on Applicant’s Admitted Prior Art in its obviousness analysis, and determined that the first three Graham factors (i.e. scope and content of prior art, differences between the claim and prior art, and level of one of ordinary skill in the art) favored a determination that the challenged claims were obvious. See id. (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966)). However, interestingly in a rare decision, the Board held that the fourth Graham factor (i.e. objective indicia of non-obviousness) outweighed a favorable determination of the other three factors. Thus, the Board did not invalidate any of the challenged claims.
In the Final Written Decision Medtronic, Inc. et al. v. Lifeport Sciences LLC., IPR2014-00288 (Paper 34, April 21, 2015), the Patent Trial and Appeal PTAB (PTAB) reversed its position and determined that the claims of the Lifeport’s patent involved in the inter partes review (IPR) were not unpatentable.
On April 29, 2015, the Judiciary Committee of the Senate introduced an anti-patent troll bill (Protecting American Talent and ENTrepreneurship Act — or PATENT Act — S.1137). The Senate bill is very different from a competing bill that was introduced by the House of Representatives in February. Focusing on patent office trials, highlights from the bill are:
Like the House bill, the Senate bill would reduce the estoppel provision for a PGR petitioner. This would-allow patent challengers to start PGR proceedings without the substantial “chilling” effect of not knowing how far estoppel would apply, should the PGR prove unsuccessful.