Archives: Alerts

New PTAB “Informative” Decisions Support Denial of Institution When Grounds Were Considered Previously

The USPTO Patent Trial and Appeal Board recently designated three decisions as “informative” under the Board’s procedures. Informative decisions are not binding authority, but contain examples of PTAB norms on recurring issues, provide guidance on issues of first impression, or provide guidance on PTAB rules and practices. See PTAB Standard Operating Procedure No. 2 (Rev. 9, Sept. 22, 2014). The three decisions designated as informative illustrate the Board’s practices in declining to grant petitions to […]

Federal Circuit Rejects Some USPTO Requirements For Amending Claims During IPR Proceedings

On October 4, 2017, the U.S. Court of Appeals for the Federal Circuit issued an en banc decision rejecting certain procedures adopted by the Patent Trial and Appeal Board (PTAB or Board) limiting a patent owner’s ability to amend claims during Inter Partes Review (IPR) proceedings under the America Invents Act. In a set of five separate opinions spanning over 140 pages, the appeals court rejected the current PTAB requirement that the patent owner bears […]

PTAB Establishes Criteria Governing Follow-On Petitions for AIA Post Grant Proceedings

General Plastic Industrial Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017) A familiar strategy in inter partes (“IPR”) review proceedings under the America Invents Act (“AIA”) is for petitioners to file multiple petitions challenging claims in an issued patent, including “follow-on” petitions filed after the initial petition for review. By using multiple petitions, a challenger may present unpatentability arguments and advance prior art that could not be adequately framed effectively in a […]

Supreme Court Agrees to Review Challenge to Constitutionality of AIA Inter Partes Review Proceedings

In a somewhat surprising decision, the U.S. Supreme Court granted certiorari on June 12, 2017 to hear a challenge to the legality of inter partes review (IPR) proceedings implemented by the Leahy-Smith America Invents Act in 2012. The Court will hear argument on whether the IPR process violates a patent owner’s constitutional rights to have property rights adjudicated by an Article III federal court and to a jury trial. Oil States Energy Services, LLC v. […]

Statements Made in IPR Preliminary Responses May Trigger Later Prosecution Disclaimer

Aylus Networks, Inc. v. Apple Inc., No. 2016-1599 (Fed. Cir. May 11, 2017) In a case of first impression, the U.S. Court of Appeals for the Federal Circuit has held that a patent owner’s statements made in a preliminary statement during an AIA inter partes review (IPR) proceeding may create prosecution disclaimer during subsequent federal court litigation. The court ruled that IPR proceedings are administrative in nature, and the same policies that support disclaimer based […]

Federal Circuit Firmly Rejects PTAB Criteria For Covered Business Method Review

In a recent panel decision that deviates from the Federal Circuit’s current tendency to defer to the U.S. Patent and Trademark Office’s interpretation of the Leahy-Smith America Invents Act, the court vacated a final written decision of the USPTO Patent Trial and Appeal Board. The appeals court ruled that the PTAB erred in instituting review of a patent under the AIA’s Transitional Program for Covered Business Method Patents (“CBM”) by applying a test that was […]

Federal Circuit Grants En Banc Review of PTAB Amendment Practice

On August 12, 2016, the U.S. Court of Appeals for the Federal Circuit granted rehearing en banc to appellants in In re Aqua Products, Inc to consider the procedures used by the USPTO Patent Trial and Appeal Board (PTAB) to limit the ability of patent owners to amend claims during AIA post-grant proceedings. Background The Leahy-Smith America Invents Act (AIA) created three varieties of administrative proceedings allowing members of the public to challenge the patentability […]

Supreme Court’s Cuozzo Decision Endorses AIA Trial Proceedings, But Preserves Key Roles for both the PTAB and Federal Courts in Patent Disputes

In Cuozzo Speed Techs., LLC v. Lee,[i] the U.S. Supreme Court rejected the patent owner’s challenge to the U.S. Patent and Trademark Office’s implementation of the Leahy-Smith America Invents Act’s new post grant proceedings. The Court held that Cuozzo could not challenge the Patent Trial and Appeal Board’s decision to institute inter partes review and that the USPTO reasonably exercised its rulemaking authority in requiring the PTAB to construe claims under review using the USPTO’s […]

Federal Circuit Rules That PTAB May Base AIA Trial Decision on Facts Outside Petition for Review

The U.S. Court of Appeals for the Federal Circuit recently affirmed a decision by the USPTO Patent Trial and Appeal Board (PTAB) invalidating two patents after an inter partes review proceeding, even though the decision partially rested on references and evidence not disclosed in the challenger’s petition for review or the PTAB’s decision to institute. The appeals court ruled that the PTAB’s use of evidence developed during the IPR trial was not a violation of […]

Supreme Court Affirms “Broadest Reasonable Interpretation” Claim Construction Standard and Limited Appeals For AIA Trials

On June 20, 2016, the U.S. Supreme Court decided Cuozzo Speed Technologies, LLC v. Lee, No. 15-446. The Court affirmed the decision of the U.S. Court of Appeals for the Federal Circuit, holding that the USPTO acted within its authority in promulgating rules requiring the Patent Trial and Appeal Board to construe patent claims in inter partes review proceedings under the “broadest reasonable interpretation” (or “BRI”) standard. The Court also held that, with limited exceptions (e.g., […]

USPTO Issues Scaled-Down Revised Rules For PTAB Trials

On April 1, 2016, the U.S. Patent and Trademark Office published final rules modifying some procedures used in AIA trials before the Patent Trial and Appeal Board (PTAB). The revised rules arise from comments received from practitioners over the last two years that existing PTAB procedures put patent owners at a tactical disadvantage. The new rules make some notable changes to some PTAB trial procedures, but not to other procedures criticized by some AIA trial […]

Federal Circuit Okays PTAB Practice Of Reviewing Fewer Than All Challenged Claims In IPR

In a recent decision, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit ruled that the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) acted properly in issuing a final decision as to some – but not all – claims challenged in an inter partes review proceeding under the America Invents Act. Synopsys, Inc. v. Mentor Graphics Corp., No. 2014-1516 (Fed. Cir. Feb. 10, 2016). As a […]

Federal Circuit Judges Voice Concern Over PTAB Practice Of Denying AIA Petitions Based On “Redundancy”

In a recent oral argument, Federal Circuit judges criticized the USPTO practice of not instituting AIA post grant proceedings on grounds considered “redundant” of other grounds in a petition. The USPTO conceded that it uses “redundancy” to control its docket without substantive review of the grounds presented in a petition, but contends that its decisions effectively are not subject to judicial review. Two Federal Circuit judges expressed concern that the practice may be unconstitutional and […]

PTAB Panel Allows Joinder Of Multiple IPR Proceedings Filed By Same Petitioner, Sharpens Disparity Between Panels Interpreting 35 U.S.C. § 315(C)

An expanded panel of the USPTO Patent Trial and Appeal Board (“PTAB” or “Board”) recently exercised its discretion under 35 U.S.C. § 315(c) to grant a motion to join an inter partes review proceeding with an already-initiated proceeding filed by the same petitioner. This latest decision underscores the divide among PTAB panels concerning the procedural maneuver of joining serial IPR petitions. Zhongshan Broad Ocean Motor Co. v. Nidec Motor Corp., Case No. IPR2015-00762 (PTAB Oct. […]

USPTO Proposes New Rules For PTAB Trial Proceedings

On August 19, 2015, the U.S. Patent and Trademark Office released a package of proposed procedural revisions affecting post-grant proceedings before the USPTO’s Patent Trial and Appeal Board (PTAB). The proposal responds to public comments submitted during 2014, and is in addition to the “quick fix” changes to the PTAB trial procedures announced by USPTO Director Michelle K. Lee on March 27, 2015. The Leahy-Smith America Invents Act (AIA) created new administrative proceedings permitting members […]