Narrative Opinion Summary
The case involves Husky Injection Molding Systems Ltd.'s appeal and Athena Automation Ltd.'s cross-appeal of a PTAB decision regarding the validity of claims in Husky's U.S. Patent 7,670,536. The patent, related to a molding machine with a novel clamp assembly, was partially invalidated for anticipation by prior art. While the PTAB found some claims anticipated, others were upheld due to insufficient incorporation by reference. Husky challenged the PTAB's jurisdiction, arguing assignor estoppel should prevent Athena, related to the patent's assignor, from seeking review. However, under 35 U.S.C. § 314(d), the Federal Circuit dismissed Husky's appeal, citing the nonappealability of institution decisions. Athena's cross-appeal focused on the PTAB's interpretation of incorporation by reference, prompting a remand for further evaluation on claims 2, 3, 17, and 19. Ultimately, the court upheld the PTAB's decision on procedural grounds, with costs awarded to Athena. Judge Plager dissented in part regarding jurisdiction, further complicating the discourse on assignor estoppel and its impact on patent challenges.
Legal Issues Addressed
Anticipation and Incorporation by Referencesubscribe to see similar legal issues
Application: The Board found that Athena did not adequately demonstrate anticipation due to insufficient incorporation by reference in the prior art, which was contested on appeal.
Reasoning: Athena failed to provide evidence or clarification on what a skilled artisan would interpret the 'pineapple and toothed-ring mechanism' in Choi to mean, leading the Board to reaffirm its conclusion that Athena did not demonstrate anticipation of claims 2, 3, 17, and 19.
Assignor Estoppel in Inter Partes Reviewsubscribe to see similar legal issues
Application: Husky argued that assignor estoppel should prevent Athena from filing for inter partes review; however, the Board rejected this argument, indicating that § 311(a) allows non-owners to file petitions.
Reasoning: Husky's appeal centers on whether assignor estoppel prevents Athena from filing a petition for inter partes review, arguing that Athena, being in privity with the assignor of the ’536 patent, is estopped from contesting its claims.
Jurisdiction and Reviewability of PTAB Decisionssubscribe to see similar legal issues
Application: The Federal Circuit dismissed Husky's appeal due to lack of jurisdiction and highlighted that decisions to institute inter partes review are final and nonappealable under 35 U.S.C. § 314(d).
Reasoning: The Federal Circuit, presided over by Circuit Judge LOURIE, dismissed Husky's appeal due to lack of jurisdiction and vacated the PTAB's decision regarding incorporation by reference and the findings concerning claims 2, 3, 17, and 19, remanding those claims for further consideration.