Discussion Board

New Pilot Program Concerning Motions To Amend

On March 15, 2019, the USPTO published a final pilot program for motions to amend (MTA) in AIA trial proceedings in the Federal Register. 84 Fed. Reg. 9497-9507 (Mar. 15, 2019). This pilot program applies to all AIA trial proceedings instituted on or after March 15, 2019; and does not extend the statutory requirement that trials be concluded within twelve months from the Patent Trial and Appeal Board’s (PTAB) decision to institute. Patent owners are now […]

Federal Circuit Rules that Assignor Estoppel Does Not Apply to IPR Petitions

Arista Networks, Inc. v. Cisco Systems, Inc., Case No. 2017-1525 (Fed. Cir. Nov. 9, 2018) The Federal Circuit recently ruled that a petition for inter partes review is not barred by assignor estoppel when the petitioner is in privity with a co-inventor who had assigned his rights to the current patent owner. The court adopted a broad interpretation of 35 U.S.C. § 311(a), finding a congressional intent to make IPR petitions available to all persons […]

Is Uncle Sam a “Person”? Supreme Court Grants Cert to Consider Government Standing in CBM Proceedings

Return Mail Inc. v. United States Postal Service, Case No. 17-1594 (U.S. Oct. 26, 2018) The U.S. Supreme Court granted certiorari in a case concerning a government agency’s standing to challenge the patentability of an issued patent by filing a petition under the America Invents Act’s Transitional Program for Covered Business Method Patents (“CBM”). The case raises interesting issues involving standing under the AIA and the limits of sovereign immunity. The petitioner, Return Mail, Inc., […]

PTAB Releases Revised AIA Trial Guide

The USPTO Patent Trial and Appeal Board has issued a revised AIA Trial Practice Guide, updating the original guide published in 2012. The revised TPG, which was published in the Federal Register on August 13, 2018, provides updated guidance on practice and procedure before the PTAB in inter partes review, post grant review, and covered business method matters. The updated TPG incorporates rule changes implemented by the PTAB since the original guide, which was written […]

Federal Circuit Rules that Tribal Sovereign Immunity Does Not Apply in IPR Proceedings

Federal Circuit Rules that Tribal Sovereign Immunity Does Not Apply in IPR Proceedings In a closely-watched case, the U.S. Court of Appeals for the Federal Circuit affirmed a decision by the USPTO’s Patent Trial and Appeal Board and held that tribal sovereign immunity does not apply to inter partes review proceedings under the America Invents Act. The court reasoned that IPR proceedings are essentially an agency review of its decision to grant the challenged patent, […]

PTAB Designates Two New Informative Decisions Addressing IPR Filing Issues

The PTAB recently designated two decisions as informative that concern the time bar to filing an inter partes review (IPR). Under 35 U.S.C. § 315(b), “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” The PTAB periodically designates one […]

PTAB Issues Guidance on Claim Amendments Caused by Aqua Products Decision

In a November 21, 2017 memorandum, David P. Ruschke, the PTAB’s Chief Administrative Patent Judge, issued new guidance affecting pending and future motions to amend claims in inter partes review proceedings. The guidance memorandum reflects changes to the PTAB’s procedures in light of the Federal Circuit’s decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc). The new guidance lessens the burden on patent owners seeking to amend claims in […]

Supreme Court to Review PTAB Practice of Reviewing Only Selected Challenged Claims

SAS Institute Inc. v. Lee, No. 16-969 (U.S. May 22, 2017). On May 22, 2017, the U.S. Supreme Court granted review in the first patent case accepted for the October 2017 term. The Court granted certiorari to review whether the Patent Trial and Appeal Board’s practice of determining the patentability of some, but not all, claims challenged in a petition for inter partes review violates the America Invents Act. In this case, ComplementSoft, LLC sued […]

Federal Circuit Reverses PTAB, Reaffirms Requirement That Anticipating Reference Disclose Every Element of Claimed Invention

Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Case No. 2016-1900 (Fed. Cir. Mar. 14, 2017). The Federal Circuit reversed the Patent Trial and Appeal Board’s final written decision that a challenged claim in a patent relating to systems for controlling torque in electromagnetic motors was unpatentable due to anticipation. The petitioner, Zhongshan Broad Ocean Motor Co., Ltd. (“Broad Ocean”), filed a petition for inter partes review of claim 21 of U.S. Patent No. 7,208,895 […]

Patent Claims, Not Embodiments Disclosed in Specification or Litigation Strategy, Determine Eligibility for Covered Business Method Review

A divided Federal Circuit panel recently vacated a Patent Trial and Appeal Board final decision ruling that challenged patent claims were unpatentable, by holding that the patent was not eligible for review under the transitional program for covered business method (“CBM”) patents. The appeals court held that a CBM patent must “have a claim that contains, however phrased, a financial activity element.” Secure Axcess, LLC v. PNC Bank N.A., Case No. 2016-1353 (Fed. Cir. Feb. […]

Federal Circuit Rules That Not All Petitioners Have Standing to Appeal Adverse IPR Results

The Federal Circuit recently dismissed an appeal from an inter partes review proceeding where the appellant/petitioner failed to establish that it had constitutional standing to maintain an appeal. Phigenix, Inc. v. Immunogen, Inc., No. 2016-1544, 2017 WL 74762 (Fed. Cir. Jan. 9, 2017). The appeals court ruled that a IPR petitioner must demonstrate constitutional standing with some admissible evidence in order to appeal an adverse PTAB result, and established the standard for meeting that burden. […]

Full Federal Circuit To Consider Appealability of PTAB Decision On Timeliness of IPR Petition

The Federal Circuit has ordered en banc review to consider whether the timeliness of a petition for inter partes review (IPR) can be appealed following the Patent Trial and Appeal Board’s decision to institute review. Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1944 (Fed. Cir. Jan. 4, 2016)(granting petition for rehearing en banc). One unresolved issue in AIA post grant proceedings is the circumstances that allow a party to appeal the PTAB’s decision to institute […]

PTAB Obviousness Decision Must Provide “Reasoned Explanation” For Motivation To Combine References

In a recent pair of decisions, the Federal Circuit has tightened the procedural and substantive requirements for Board decisions on obviousness.  In Nuvasive, the Federal Circuit vacated a PTAB final decision that challenged claims were unpatentable as obvious when the Board failed to articulate a reasoned explanation for combining two prior art references. In re Nuvasive, Inc., No. 2015-1670 (Fed. Cir. Dec. 7, 2016). This decision provides patent owners with relief from tenuous conclusory arguments that […]

PTAB Decision To Terminate IPR Proceedings After Institution Is Not Appealable

Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., No. 2015-1977 (Fed. Cir. Oct. 20, 2016) Applying the Supreme Court’s interpretation of the AIA’s provision making inter partes review institution decisions “final and nonappealable,” 35 U.S.C. § 314(d), the U.S. Court of Appeals for the Federal Circuit held that a Patent Trial and Appeal Board decision to terminate an IPR after institution due to a petitioner’s failure to identify the real party-in-interest cannot be challenged on […]

Supreme Court denies Cert in Cases Challenging Constitutionality of AIA Trials

On October 11, 2016, the US Supreme Court denied petitions for certiorari filed in two cases by parties challenging the constitutionality of post grant proceedings instituted under the Leahy-Smith America Invents Act. In the first case, Cooper v. Lee, No. 15-955, the petitioners argued that 35 U.S.C. § 318(b), which permits the USPTO Patent Trial and Appeal Board to issue certificates cancelling patent claims after inter partes review of issued patents, violates the Separation of Powers […]