James Crawford (US)

Subscribe to all posts by James Crawford (US)

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 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 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

Motion to exclude is “improper vehicle” to challenge qualification of prior art under § 102(b)

In Chicago Mercantile Exchange Inc. v. 5th Market, Inc., the PTAB issued a Final Written Decision finding the challenged claims unpatentable as obvious over two references. CBM2014-00114, Paper 35 (Aug. 18, 2015). In doing so, the Board provided guidance on the proper vehicle for challenging whether a reference qualifies as prior art. In its Patent … Continue reading

PTAB does not have jurisdiction in IPRs to review procedural issues from the original prosecution

In Samsung Electronics Co. v. E-Watch, Inc., the PTAB rejected an IPR Petitioner’s attempt to challenge the correctness of the USPTO’s decision on a Petition to Revive during the original prosecution. IPR2015-00612, Paper 8 (Jul. 8, 2015). The Petitioner asserted one ground of unpatentability under 35 U.S.C. §102(b), alleging that Monroe (Published PCT Application WO … Continue reading

PTAB denies IPR petition for failure to be clear and succinct

In Apple, Inc. v. ContentGuard Holdings, Inc., the PTAB denied the Petitioner’s IPR petition because it did not “focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record,” but instead was a “repository of all the information that a judge could possibly consider.” IPR2015-00358, Paper 9 (Jul. 2, 2015). As an initial … Continue reading

PTAB finds patent non-obvious based on secondary considerations

In Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd., the PTAB found that the patented invention was not obvious based on the secondary considerations of commercial success and copying, even though it found that the prior art disclosed all of the limitations and that there was motivation to combine the teachings. IPR2014-00309, Paper 83 … 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

PTAB denies patent owner’s request for additional third party discovery

In Alternative Legal Solutions, Inc. v. Employment Law Compliance, Inc., the PTAB denied the Patent Owner’s motion for authorization to compel third party testimony and production of documents regarding whether a reference qualified as a “printed publication,” finding that there was not more than a mere possibility or mere allegation that something useful to the … Continue reading

PTAB denies request to add additional challenge to claims in instituted CBM review

In Indeed, Inc. v. Career Destination Development, LLC, the PTAB denied the Petitioner’s request to file a motion to add the review of certain dependent claims under 35 U.S.C. §112, first paragraph, finding that the Petitioner did not present a “sufficient factual basis” to authorize the filing of the motion. CBM2014-00069 & CBM2014-00070, Paper 15 (Sep. … Continue reading

“Speaking objections” improper and could result in exclusion of testimony

In Medtronic Inc. v. Troy R. Norred, the PTAB warned that “speaking objections” interposed by Patent Owner’s counsel during deposition of Patent Owner’s expert were improper under the Office Patent Trial Practice Guide, and that further violations of the Practice Guide could warrant sanctions, including exclusion of the primary declaration testimony from the witness being … Continue reading

PTAB grants corrected filing date based on “clerical error”

In Schott Gemtron Corp. v. SSW Holding Company, Inc., the Patent Trial and Appeal Board (PTAB) granted the Petitioner’s motion to correct the filing date of its IPR petition based on a “clerical error” in uploading an incorrect exhibit. IPR2014-00367, Paper 30 (Sep. 22, 2014). The IPR petition, filed on January 18, 2014, listed Exhibit … Continue reading

Quality over quantity: PTAB exercises discretion to deny IPR petition for “administrative efficiency”

In Zetec v. Westinghouse, the Patent Trial and Appeal Board (PTAB) denied an IPR Petition that presented “numerous grounds” of unpatentability and “underdeveloped arguments,” as attempting to evaluate such a petition “would place a significant burden on the Board and contravene the efficient administration of the Office.”  IPR2014-00384, Paper 10 (Jul. 23, 2014). The Petition … Continue reading