Topic: Federal Circuit

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Federal Circuit clarifies what IPR petition must disclose to provide adequate notice to Patent Owner

In In re NuVasive, Inc., the Federal Circuit clarified what constitutes adequate notice to a Patent Owner of “pertinent portions” of a prior art reference relied upon in an IPR petition. Case No. 2015-1672 (Fed. Cir. Nov. 9, 2016). On appeal to the Federal Circuit after the Board cancelled all but one of the challenged … Continue reading

CAFC requires weighing diligence evidence as a whole and rejects “scouring” for gaps

In Perfect Surgical v. Olympus America, Inc., the Federal Circuit found harmful error in the PTAB’s diligence framework and conclusions, thereby potentially lowering the bar required to establish diligence in PTAB cases. Case No. 2015-2043 (Fed. Cir. Nov. 15, 2016). In the underlying IPR, the Board found a patent owner did not prove the inventor continuously … Continue reading

No due process violation where PTAB “previews” new construction at oral hearing

In Intellectual Ventures II LLC v. Ericsson Inc.,[1] the Federal Circuit considered whether the PTAB’s adoption of a new claim construction in its Final Written Decision constitutes a violation of the parties’ due process. Intellectual Ventures argued that it was denied due process because the construction set forth in the Board’s Final Written Decision was … Continue reading

Federal Circuit rules that PTAB’s decision on time-bar is still not appealable

A Federal Circuit panel recently confirmed that 35 U.S.C. § 314(d) does not permit appeal of a decision by the PTAB that an IPR petitioner is not time-barred under 35 U.S.C. § 315(b). Wi-Fi One, LLC v. Broadcom Corporation, No. 2015-1944 (Fed. Cir. Sep. 16, 2016). Patent Owner unsuccessfully argued to the PTAB that Petitioner … Continue reading

Federal Circuit Rejects PTAB’s Analysis of Motion to Amend

In Veritas Technologies LLC v. Veeam Software Corporation, the Federal Circuit concluded that the PTAB erred in denying Patent Owner’s motion to amend claims in an IPR proceeding and remanded to the PTAB for further consideration of the substitute claims submitted in the motion. No. 2014-00090 (Fed. Cir. Aug. 30, 2016). In the IPR, the … Continue reading

Federal Circuit Rejects PTAB’s Reliance on “Common Sense” to Supply Missing Claim Limitation

In Arendi S.A.R.I. v. Apple Inc., et al., the Federal Circuit reversed a PTAB decision finding all instituted claims in an IPR invalid as obvious based on the prior art and “common sense.” No. 2015-2073 (Fed. Cir. Aug. 10, 2016). The challenged patent claimed, in part, a method for accessing a document and searching for … Continue reading

Federal Circuit criticizes PTAB for changing claim construction midstream

In SAS Institute, Inc. v. ComplementSoft, LLC, the Federal Circuit criticized the PTAB for changing its claim construction “midstream” and vacated the Board’s finding that, under the newly adopted construction, one of the claims in the Patent Owner’s software patent was valid. Nos. 2015-1346, 2015-1347 (Fed. Cir. Jun. 10, 2016). In its institution decision, the … Continue reading

Federal Circuit rejects PTAB’s attempt at burden-shifting

In In Re Magnum Oil Tools Int’l, Ltd., the Federal Circuit found that the PTAB had improperly used its IPR institution standard—a reasonable likelihood that the petitioner would prevail as to at least one of the claims challenged in the petition—as justification for shifting the burden of persuasion and burden or production onto the Patent … Continue reading

Federal Circuit rules that PTAB may base IPR final decisions on evidence outside instituted grounds

In a recent decision affirming the PTAB’s obviousness findings in an IPR, the Federal Circuit confirmed that the Board may use prior art not cited in instituted grounds as evidence to support a final decision. Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., No. 2015-1721 (Fed. Cir. June 14, 2016). In two IPR petitions, Biomarin … Continue reading

Federal Circuit provides guidance on broadest reasonable interpretation standard for claim construction in PTAB proceedings

In two recent cases, the Federal Circuit provided guidance on applying the broadest reasonable interpretation (BRI) standard for claim construction in IPR proceedings. PPC Broadband Inc. v. Corning Optical Communications RF, LLC, No. 2015-1361, 1366, 1368, 1369 (Fed. Cir. Feb. 22, 2016) (“PPC I”) and PPC Broadband Inc. v. Corning Optical Communications RF, LLC, No. … Continue reading

Federal Circuit Affirms PTAB’s Conclusion that Claims Reciting a Subsidy Are CBM Eligible

In Blue Calypso, LLC, v. Groupon, Inc., the Federal Circuit concluded that the Board did not exceed its authority to conduct a CBM review of Blue Calypso’s challenged patents, and that the Board correctly applied the statutory definitions of “covered business method” and “technological invention” to the challenged claims. Nos. 2015-1396, -1397, -1398, -1399, -1401 (Fed. … Continue reading

Federal Circuit rules that it has no jurisdiction to review PTAB’s refusal to institute redundant grounds

In a recent decision affirming the PTAB’s patentability determination in an IPR, the Federal Circuit confirmed that it has no jurisdiction to review the Board’s refusal to institute grounds it deemed to be redundant of instituted grounds. Harmonic, Inc. v. Avid Technology, Inc., No. 2015-1072 (Fed. Cir. Mar. 1, 2016). In its IPR petition, the … Continue reading

Federal Circuit holds that grounds denied institution as redundant are not subject to estoppel

In its recent decision in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., the Federal Circuit held that estoppel does not apply to grounds denied institution on the basis of redundancy. No. 2015-1116 (Fed. Cir. Mar. 23, 2016). In its institution decision in an IPR, the Board instituted two obviousness grounds against a set … Continue reading

Federal Circuit re-affirms and clarifies PTAB rules for motions to amend claims

In Nike, Inc. v. Adidas AG, the Federal Circuit re-affirmed the PTAB’s requirement that in IPR proceedings the Patent Owner must show the patentability of proposed substitute claims over both the prior art of record in the IPR and other prior art known to the Patent Owner. No. 2014-1719 (Fed Cir. Feb. 11, 2016). However, … Continue reading

Federal Circuit approves PTAB practice of addressing patentability of only instituted claims in final written decisions

In Synopsys, Inc. v. Mentor Graphics Corp., a split Federal Circuit panel held that final written decisions in IPR proceedings need not address all claims challenged in the petition. Nos. 2014-1516, 2014-1530 (Fed. Cir. Feb. 10, 2016). In its institution decision, the Board instituted review of only some of the claims challenged in the petition. … Continue reading

Federal Circuit rules that PTAB failed to adequately describe its reasoning for obviousness finding

In a recent decision vacating the PTAB’s obviousness findings in an IPR, the Federal Circuit set forth criteria necessary to support future obviousness findings. Cutsforth, Inc. v. MotivePower, Inc., No. 2015-1316 (Fed. Cir. Jan. 22, 2016) (nonprecedential). In its 2014 IPR petition, the Petitioner challenged all claims of the patent at issue as being invalid … Continue reading

Federal Circuit rules that PTAB has full discretion to deny request to file motion for supplemental information

A unanimous Federal Circuit panel recently affirmed the PTAB’s decision denying a Petitioner’s request to file a motion to submit an expert report as supplemental information under 37 C.F.R. § 42.123(a). Redline Detection, LLC v. Star Envirotech, Inc., No. 15-1047 (Fed. Cir. Dec. 31, 2015). USPTO regulations permit a party to file a motion to submit supplemental information … Continue reading

Federal Circuit weighs in again on reviewability of institution decisions

In a recent case affirming the PTAB’s final decision of invalidity, the Federal Circuit held that it lacks jurisdiction to review whether the Board improperly instituted a CBM Review on a ground not asserted in the petition. SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307 (Fed. Cir. 2015). The Federal Circuit, however, reiterated that … Continue reading

Federal Circuit approves having same PTAB panel make both institution and final decisions in IPR proceedings

In affirming a PTAB ruling that the challenged patent was invalid for obviousness, a split Federal Circuit panel recently held that neither the America Invents Act nor the Constitution precludes the same PTAB panel that made the decision to institute IPR from also rendering the final written decision on patent validity. Ethicon Endo-Surgery, Inc. v. … Continue reading

Federal Circuit confirms that statutory bar defense to AIA proceedings is not subject to waiver

In GTNX, Inc., v. Inttra, Inc., — F.3d —, 2015 WL 3692319 (Fed. Cir. June 16, 2015), the Federal Circuit held that a Patent Owner’s failure to invoke the statutory bar set forth in 35 U.S.C. § 325(a)(1) prior to an institution decision by the Board does not constitute a waiver, and the Court reiterated that … Continue reading

Federal Circuit addresses use of BRI standard and motions to amend claims in IPRs

In Microsoft Corp. v. Proxyconn, Inc., — F.3d —, 2015 WL 3747257 (Fed. Cir. June 16, 2015), the Federal Circuit once again affirmed that the broadest reasonable interpretation (“BRI”) standard of claim construction applies in IPRs, providing further guidance on applying the standard. It also approved of the Board’s requirement on motions to amend claims … Continue reading

Judicial review of PTAB institution decisions: When one door closes, another opens

In a group of recent decisions the Federal Circuit held that it lacks jurisdiction to review the PTO’s decision to institute both IPR and CBM proceedings. However, with regard to CBM proceedings, the Court appears to have created a potential “backdoor” method for challenging institution decisions. In In re Cuozzo Speed Technologies, LLC, an earlier … Continue reading

Federal Circuit rules it has no interlocutory jurisdiction on denial of motion to stay until CBM Review is instituted

We have previously written about the emerging trend of district courts not granting motions to stay until IPR or CBM proceedings have been instituted. The Federal Circuit seemed to indirectly support that approach in its recent decision in Intellectual Ventures II LLC v. JPMorgan Chase & Co., in which it held that it lacked jurisdiction … Continue reading

Federal Circuit affirms PTAB in first review of IPR decision

In In re Cuozzo, the Federal Circuit held, in a 2-1 opinion, that decisions of the PTAB to institute an IPR are not appealable and confirmed the use of the broadest reasonable interpretation standard for claim construction proceedings in IPR. In re Cuozzo Speed Techs., LLC, No. 2014-1301 (Fed. Cir. Feb. 4, 2015). The Court … Continue reading
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