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Explore the latest in patent, trademark, and copyright cases on the Merchant & Gould LLP blog. Stay informed with expert insights on intellectual property law updates.

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Recently, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in&nbsp;<a href="https://cafc.uscourts.gov/opinions-orders/23-1147.OPINION.5-23-2024_2322401.pdf"><em>Speck v. Bates</em>, No. 23-1147 (May 23, 2024)</a>, reversing the Patent Trial and Appeal Board’s holding that a party’s claims in an interference were not time-barred under pre-AIA 35 U.S.C. § 135(b)(1).

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By way of background, an interference is a PTAB proceeding that involves determining which of two or more parties was the first to invent the subject matter claimed in competing pre-America Invents Act (AIA) patents or patent applications.&nbsp; The particular interference here concerned U.S. Patent Application No. 14/013,591, owned by Bates, and U.S. Patent No. 8,257,305, owned by Speck. In the interference proceeding, Speck filed a motion arguing that the claims of Bates’s ’591 application were time-barred under pre-AIA 35 U.S.C. § 135(b)(1), which provides that “[a] claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.”&nbsp; The PTAB denied Speck’s motion and ultimately awarded priority to Bates. &nbsp;Speck appealed.

The Federal Circuit reversed.&nbsp; The Court first found that there has been a longstanding exception to the plain language of § 135(b)(1) when the patent applicant files its claim after the one-year cutoff but had already been claiming substantially the same invention before the one-year cutoff.&nbsp; Thus, the issue before the Court was whether Bates’s new claims presented after the cutoff were directed to substantially the same invention as claims Bates had filed before the cutoff.&nbsp; The PTAB had found that Bates’s pre-cutoff and post-cutoff claims were directed to substantially the same invention (and thus the post-cutoff claims were not time-barred) based on its determination that the post-cutoff claims were not materially narrower than the pre-cutoff claims.&nbsp; The Court concluded that approach was insufficient for determining substantial similarity.&nbsp; Specifically, the Court held that the PTAB should have applied a “two-way test” to also check if the pre-cutoff claims were materially narrower than the post-cutoff claims.&nbsp; The Court further held that, here, Bates’s pre-cutoff claims were materially narrower than Bates’s post-cutoff claims as a matter of law.&nbsp; Thus, Bates’s post-cutoff claims were time-barred.

CAFC Reverses PTAB’s Time-Bar Decision in Patent Interference

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