Discussion Board

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, […]

PTAB Remains Consistent from Institution to Final Decision in First Group of IPRs Decided Together

On February 10, 2014, the Patent Trial and Appeal Board (PTAB) issued a group of four final written decisions to inter partes review (IPR) trial proceedings involving Intellectual Ventures Management, LLC (“IVM”) and Xilinx, Inc. (“Xilinx”).  IVM filed four IPR petitions challenging the patentability of claims in four patents owned by Xilinx.  The four final written decisions were entered just prior to the one year anniversary of the institution date, as required by statute. The […]