PTAB faces some hostilities from the new Director of the U.S. Patent and Trademark Office (USPTO), who cites perceived 'issues' expressed by patent maximalists like himself. The reality of the matter is, companies that actually make something support and appreciate PTAB.
For the past several years, I have been conducting an annual patent law moot court competition at Mizzou. This year – the eighth annual – the case was was captioned as an appeal of a recent dismissal by District Court Judge Indira Talwani in Cardionet, LLC v. Infobionic, Inc., 2018 U.S. Dist. LEXIS 177305, 2018 WL 5017913 (D. Mass October 16, 2018). In her decision, Judge Talwani dismissed the case for failure to state a claim — ruling CardioNet’s heart monitor patent is directed to an abstract idea rather than a patent eligible invention. U.S. Patent Number 7,941,207 (“the ‘207 patent”). The moot court is sponsored by McKool Smith and so the winner receives $1,000.
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CardioNet sued InfoBionic for infringement in March 2017. Rather than filing an answer, InfoBionic filed a Motion to Dismiss for “failure to meet the pleading standard of Twombly and Iqbal and for patent ineligibility of the ‘207 patent pursuant to €§ 101.” While the district court was considering the briefed motion, the Federal Circuit decided Aatrix and Berkheimer but did not permit supplemental briefing regarding material facts at issue in the case. The district court then granted the motion to dismiss with prejudice – finding the claims invalid as directed to an abstract idea. The court explained “the innovation of the … patent may be to use computer equipment and logic to monitor the variability of beats, but nothing in these claims places any limitation on that abstract idea.”
On Friday, November 9th, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in NuVasive, Inc. v. Iancu, which vacated certain findings of the Patent Trial and Appeal Board (PTAB) in an inter partes reexamination proceeding involving a NuVasive patent covering a system and methods for minimally invasive surgical procedures. The Federal Circuit panel of Circuit Judges Pauline Newman, Raymond Chen and Todd Hughes determined that on the issue of secondary considerations the PTAB erred in finding no nexus between NuVasive’s claimed method and the surgical procedure actually commercialized by NuVasive. The panel also held that further fact-finding was required in order to determine whether an asserted prior art publication teaches a certain nerve-monitoring technique necessary to support the Board’s determination of obviousness. Therefore, the decision of the PTAB was vacated and the case remanded for further proceedings consistent with the Court’s opinion.
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NuVasive asserted the ‘057 patent in an infringement suit filed against Globus Medical in October 2010. The following February, Globus filed the request for the reexamination on claims of the ‘057 patent to determine obviousness based on combinations of four pieces of asserted prior art. In the first office action, the examiner rejected all claims as obvious because all of the references pertained to minimally invasive surgical techniques and a skilled artisan would have found it obvious to combine them to achieve the claimed system and methods.