This morning, the Federal Circuit issued a precedential opinion in a patent case, finding that the Patent Trial and Appeal Board erred by invalidating a claim for anticipation when the relevant petition asserted only obviousness. The court also issued a nonprecedential opinion in another patent case affirming PTAB findings of obviousness. Finally, the court issued two Rule 36 judgments. Here are the introductions to the opinions and links to the Rule 36 judgments.
M & K Holdings, Inc. v. Samsung Electronics Co., Ltd. (Precedential)
Appellant M & K Holdings, Inc., appeals from a decision of the Patent Trial and Appeal Board in an inter partes review proceeding in which the Board held all claims of U.S. Patent No. 9,113,163 (“the ’163 patent”) unpatentable. M&K argues that the Board erred by relying on references that do not qualify as prior art printed publications under 35 U.S.C. § 102. In addition, M&K argues that the Board erred by finding claim 3 anticipated when the petition for inter partes review asserted only obviousness as to that claim. We affirm the Board’s decision with respect to the printed-publication issue, but we vacate the Board’s decision with respect to claim 3.
The Trustees of Columbia University in the City of New York (“Columbia”) appeal from two final written decisions of the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) holding claim 1 of U.S patent 9,718,852 (“the ’852 patent”), claim 1 of U.S. Patent 9,719,139 (“the ’139 patent”), claim 1 of U.S. Patent 9,708,358 (“the ’358 patent”), claim 1 of U.S. Patent 9,725,480 (“the ’480 patent”), and claims 1–2 of U.S. Patent 9,868,985 (“the ’985 patent”) unpatentable as obvious. See Illumina, Inc. v. Trustees of Columbia Univ. in the City of New York, Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, 2018 WL 8619911 (P.T.A.B. June 21, 2019) (“Decision I”), J.A. 1–81; Illumina, Inc. v. Trustees of Columbia Univ. in the City of New York, No. IPR2018-00797 (P.T.A.B. Sept. 9, 2019), J.A. 82–162 (“Decision II”). For the reasons detailed below, we affirm.