Discussion Board

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 […]

Federal Circuit Overturns PTAB Denial of Motion to Amend Claims in IPR Proceeding

Veritas Technologies LLC v. Veeam Software Corp., No. 2015-1894 (Fed. Cir. Aug. 30, 2016). On recurring controversy in AIA trials is the difficulty patent owners face meeting the PTAB’s strict requirements for amending claims. In a recent case, the Federal Circuit vacated a PTAB ruling denying a patent owner’s motion to amend. It noted that the patent owner demonstrated that elements added to the claims resulted in a combination that was not disclosed in the […]

Federal Circuit Rules that PTAB Claim Construction in Inter Partes Reexamination Proceeding Is Not Binding on District Court in Later Litigation

Skyhawke Technologies, LLC v. Deca International Corp., Case No. 2016-1325 (Fed. Cir. July 15, 2016) One recurring question arising from AIA trials and other post-grant proceedings before the PTAB is whether a claim construction ruling made during the administrative proceeding is binding on a district court in a subsequent infringement lawsuit or other litigation. In B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2105), the Supreme Court ruled that a factual finding by […]

PTAB Institution Rate Continues To Lag Behind 2014 Rate, Highlighting Need For Expert Reports to Adequately Support Petition

Data released by the USPTO Patent Trial and Appeal Board (PTAB) for the Fiscal Year 2016 reveals that the PTAB is granting petitions to review at a rate similar to FY 2015, and significantly below the higher rate in FY 2014. Thus far in FY 2016, the Board has denied instituting trial on about 33% of all IPR petitions. This is consistent with the denial rate in 2015 (34.7%) and illustrates a dramatic increase in […]

PTAB Invalidates Two Livestock Patents in First PGR Decisions

On June 13, 2016, the Patent Trial and Appeal Board (PTAB or Board) issued two post-grant review (PGR) decisions invalidating two livestock valuation patents for being directed to patent ineligible subject matter under 35 U.S.C. § 101, based on the Supreme Court’s opinion in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). These are the first PGR decisions to come from the Board under the new Leahy-Smith America Invents Act (AIA) procedure. American Simmental […]

PTAB Decision Vacated and Remanded for Changing Claim Construction “Midstream”

Even though the Federal Circuit agreed with the Patent Trial and Appeal Board’s new claim construction in the final written decision, the Court found that the Board errored by adopting a new construction for a term it had construed differently in its institution decision. (see SAS Institute, Inc. v. ComplementSoft, LLC (Fed. Cir. June 10, 2016). The Federal Circuit vacated and remanded the portions of the Board’s final written decision that relied on the new […]

In re Aqua Products, Inc.: Federal Circuit Continues To Uphold PTAB Limits on Motions To Amend

Although the America Invents Act permits patent owners to file motions to amend claims in a patent under review, see e.g., 35 U.S.C. § 316(d), patentees generally have been unsuccessful in seeking amendments. The USPTO has promulgated rules that place squarely on the patent owner the burden of demonstrating that proposed substitute claims are patentable over the known prior art. Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012–00027, Paper 26, 2013 WL 5947697 (PTAB June 11, […]