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IPO Daily News™

Thursday, 5 October 2017 8:35 am

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* * * * COURT ISSUES FIVE OPINIONS IN HOLDING THAT USPTO MAY NOT REQUIRE PATENT OWNER TO PROVE PATENTABILITY OF PROPOSED AMENDED CLAIMS IN INTER PARTES REVIEWS (cont’d)

Aqua Prod., Inc. v. Matal, 15-1177 — As reported yesterday in a special edition of the Daily News™, a split Federal Circuit sitting en banc vacated a USPTO inter partes review decision denying Aqua’s motion to amend. Aqua’s claims were for automated swimming pool cleaners. In an opinion by Judge O’MALLEY, a majority of participating judges agreed that the USPTO may not place the burden of persuasion regarding the patentability of proposed amended claims on the patent owner.”

O’Malley, joined by Judges NEWMAN, LOURIE, MOORE, and WALLACH, argued that under Chevron Step One, “Congress explicitly placed the burden of persuasion to prove propositions of unpatentability on the petitioner for all claims, including amended claims. This interpretation is compelled by the literal text of § 316(e), the overall statutory scheme for IPRs set forth in the AIA, and its legislative history.” She argued that the unambiguous statutory language should end the Court’s inquiry. However, because six of the eleven judges participating in the en banc rehearing believed the statutory scheme was ambiguous, the majority reached Chevron Step Two. Judges DYK and REYNA joined in holding that because USPTO regulations governing the conduct of the proceedings did not “address[] the burden of proof or persuasion with respect to propositions of unpatentability once an amended claim has been entered into the IPR,” the USPTO had made no interpretation that was owed deference and thus was prohibited from imposing the burden of proving unpatentability on the patent owner.

Judge Moore, joined by Judges Newman and O’Malley, filed a concurring opinion arguing that the Board’s opinions in Idle Free and MasterImage were owed no deference because Congress delegated to the USPTO Director the authority to fill any gaps in the legislation that created inter partes reviews through regulation only.

Judge Reyna, joined by Judge Dyk, argued that that USTPO had not conducted “a fully considered interpretation of the inter partes review statute directed to the evidentiary burdens for motions to amend necessary for Chevron deference” and that rulemaking by adjudication was “too procedurally defective to receive Chevron deference.” Chief Judge PROST and Judges TARANTO, CHEN, and HUGHES joined with regard to Judge Reyna’s argument that the statute and regulations placed the burden of production on the patent owner.

Friday’s edition of the Daily News will include analysis of two dissenting opinions that were filed in the case.

IPO EDUCATION FOUNDATION ANNOUNCES 44th ANNUAL INVENTORS OF THE YEAR

The inventors of CRISPR-CAS9 from the Broad Institute of Harvard and MIT and University of California, Berkeley have been named the 2017 Inventors of the Year. This groundbreaking development of gene editing modification technology is credited to the inventors: FENG ZHANG, FEI RAN, LE CONG, PATRICK HSU, RANDALL PLATT, and NEVILLE SANJANA from the Broad Institute, and JENNIFER DOUDNA, EMMANUELLE CHARPENTIER, MARTIN JINEK, and KRZYSZTOF CHYLINSKI from University of California, Berkeley.

Join us to celebrate the world’s most outstanding recent inventors! The winners will be honored at the Foundation Awards Dinner on 5 December in Washington, D.C.

IP IN THE MASS MEDIA

Columbia Wins Suit against Snow Gear Company on Glove Design

Yesterday the Portland Business Journal reported that a California federal court awarded Columbia Sportswear Co. over $3 million after finding that snow gear company Seirus Innovation Accessories infringed Columbia’s patent on the design of gloves featuring its Omni-Heat Reflective Technology.

ESPN Corrects Ad after University of North Texas Suggests Trademark Infringement

Yesterday Sports Illustrated reported that ESPN corrected an advertisement for an upcoming Michigan-Michigan State game that identified Michigan State as “Mean Green,” after the University of North Texas’ athletic director pointed out in a tweet that “Mean Green” is the trademarked nickname of his school’s team.