{"id":1297,"date":"2016-11-09T14:22:14","date_gmt":"2016-11-09T19:22:14","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1297"},"modified":"2016-11-10T15:45:49","modified_gmt":"2016-11-10T20:45:49","slug":"federal-circuit-to-ptab-play-fair","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1297","title":{"rendered":"Federal Circuit to PTAB: “Play Fair.”"},"content":{"rendered":"

In In re Nuvasive, Inc.<\/em>, [2015-1672, 2015-1673] (November 9, 2016), the Federal Circuit reversed one of two PTAB decisions because the patent owner was not given adequate notice of the grounds of invalidity asserted against the patent. \u00a0The Federal Circuit said that the Board\u2019s ultimate reliance on material not adequately identified by petitioner in the cited reference,\u00a0together with the Board’s refusal to allow NuVasive to respond
\nfully once that material was called out, violated NuVasive\u2019s\u00a0rights under the Administrative Procedure Act.<\/p>\n

The Federal Circuit described the Board’s conduct:<\/p>\n

NuVasive objected to Medtronic\u2019s argument regarding<\/p>\n

Michelson\u2019s Figure 18, which it contended was a new\u00a0ground of invalidity asserted for the first time on reply. It\u00a0requested leave to file motions to strike or, alternatively,\u00a0surreplies, which the Board denied. NuVasive also attempted\u00a0to address the matter at oral argument, but the\u00a0Board refused to allow NuVasive to make substantive\u00a0arguments in response. When Medtronic made arguments\u00a0relating to Michelson\u2019s Figure 18 in its rebuttal\u00a0time, NuVasive objected again, but the Board assured\u00a0NuVasive that it understood NuVasive\u2019s position and\u00a0would consider the propriety of Medtronic\u2019s arguments\u00a0when making a final decision.<\/p><\/blockquote>\n

Under the Administrative Procedure Act, the Federal Circuit must\u00a0\u201chold unlawful and set aside agency action . . . not in\u00a0accordance with law [or] . . . without observance of procedure required by law.\u201d 5 U.S.C. \u00a7 706. A patent owner is undoubtedly\u00a0entitled to notice of and a fair opportunity to meet\u00a0the grounds of rejection, based on due-process and APA\u00a0guarantees. \u00a0 For a formal\u00a0adjudication like the inter partes review considered here,\u00a0the APA imposes particular requirements on the PTO:\u00a0The agency must timely inform the patent owner of the\u00a0matters of fact and law asserted, 5 U.S.C. \u00a7554(b)(3),
\nmust provide all interested parties opportunity for the\u00a0submission and consideration of facts and arguments and hearing and decision on notice, 5 U.S.C. \u00a7554(c), and\u00a0must allow a party to submit rebuttal evidence as\u00a0may be required for a full and true disclosure of the facts, 5 U.S.C.\u00a0\u00a7 556(d).<\/p>\n

The Federal Circuit said that although the Board is not limited to citing only portions
\nof the prior art specifically drawn to its attention, in\u00a0this case it is clear that the Board treated Michelson\u2019s\u00a0Figure 18 as an essential part of its obviousness findings
\nidentifying claim elements in the prior art. \u00a0Under the APA\u2019s standards, NuVasive was entitled to\u00a0an adequate opportunity to respond to the asserted facts\u00a0about Michelson. And under the APA\u2019s fact-specific\u00a0standard, common sense, and this court\u2019s precedent, that\u00a0entitlement was not lessened in this case by virtue of the\u00a0opportunity NuVasive had to respond to other factual\u00a0assertions about Michelson.<\/p>\n

In one of the IPRs the Federal Circuit found that the Notice was adequate, based upon the way that the reference \u00a0was described in the Petition, but in the other there was no notice before NuVasive filed its patent owner response. \u00a0It was only after the petitioner’s reply that NuVasive as given fair notice, but at no point after the Reply\u00a0did the Board give NuVasive the required opportunity to\u00a0respond to that point.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In In re Nuvasive, Inc., [2015-1672, 2015-1673] (November 9, 2016), the Federal Circuit reversed one of two PTAB decisions because the patent owner was not given adequate notice of the grounds of invalidity asserted against the patent. \u00a0The Federal Circuit … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"class_list":["post-1297","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1297","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1297"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1297\/revisions"}],"predecessor-version":[{"id":1298,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1297\/revisions\/1298"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1297"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1297"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1297"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}