Tom Owens (US)

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PTAB Feeling SASsy: Institutions to Include “All Challenges”

The Supreme Court’s recent decision in SAS Institute Inc. v. Iancu will rapidly impact pending and future AIA trials. According to a guidance memo released by the Patent Trial and Appeal Board on April 26, 2018, future institution decisions “will institute as to all claims or none” and, when granting institution, “will institute on all … Continue reading

All-or-Nothing: Supreme Court Requires Instituted IPRs to Address All Challenged Claims

The United States Supreme Court in SAS Institute struck down the Patent Trial and Appeal Board’s practice of instituting inter partes review (IPR) on only a subset of claims challenged in the petition. SAS Institute Inc. v Iancu, 584 U.S. ___, No. 16-969 (2018). Thus, the Board’s final written decisions in IPRs must address the patentability of all challenged claims. The Board’s … Continue reading

“Informative” Decisions Show How the PTAB Exercises Its Discretion to Deny Petitions Based on Previously-Considered Prior Art and Arguments

In the past several months, the PTAB has designated as “informative” five decisions in which the Board exercised its discretion to deny institution under 35 U.S.C. § 325(d).  That statute provides that the board may reject a petition if “the same or substantially the same prior art or arguments previously were presented to the Office.”  … Continue reading

EDTX judge rules that IPR estoppel applies to all grounds included in the petition, except those that are denied for purely procedural reasons

In Biscotti Inc. v. Microsoft Corp., Magistrate Judge Roy S. Payne of the Eastern District of Texas recommended finding that the IPR estoppel statute, 35 U.S.C. § 315(e), applies to all grounds included in an IPR petition except those that are denied institution for purely procedural reasons, such as for redundancy. Case No. 2:13-CV-01015-JRG-RSP (E.D. … Continue reading

District Court holds that IPR estoppel does not apply to grounds denied institution on the merits

In Verinata Health, Inc. v. Ariosa Diagnostics, Inc., Judge Susan Illston of the Northern District of California held that the IPR estoppel statute, 35 U.S.C. § 315(e), does not apply to invalidity grounds asserted in an IPR petition but denied institution on the merits. Case No. 12-cv-05501-SI (N.D. Ill. Jan. 19, 2017). The plaintiff in Verinata … 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 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

A Prima Facie Case Is Not Required for Institution

In Nestlé Purina Petcare Co. v. Oil-Dri Corp. of America, the PTAB held that the “reasonable likelihood” standard for institution of trial does not require that the Petitioner establish a prima facie case of unpatentability. IPR2015-00737, Paper 16 (Sept. 23, 2015). After a decision instituting trial, the Patent Owner filed a rehearing request arguing that the … Continue reading

PTAB denies institution because Petitioner failed to prove the effective date of an alleged § 102(e) reference

In Globus Medical, Inc. v. DePuy Synthes Products, LLC, the PTAB denied institution because the Petitioner failed to prove that one of the references relied upon in all of the invalidity grounds was § 102(e) prior art. IPR2015-00099, Paper 15 (May 1, 2015). The reference in question, Panjabi, was a U.S. patent that issued from a … Continue reading

PTAB grants request for rehearing based on overlooked arguments

In Handi Quilter, Inv. v. Bernina International AG, the PTAB granted the Petitioner’s request for rehearing based on arguments it overlooked in its previous non-institution decision. IPR2014-00270, Paper 17 (December 30, 2014). The challenged claims were directed to a quilting machine that automatically inserts stitches based on movement of the fabric, with the movement being … Continue reading

PTAB panel creates new procedure for challenging scope of petitioner’s reply

In Toyota Motor Corp. v. Hagenbuch, the PTAB was presented with a novel procedural question regarding challenging the scope of the petitioner’s reply, which the Board resolved by creating what appears to be a new procedure.  IPR2013-00638, Paper 31 (Oct. 16, 2014). Every IPR trial will have at least three major filings: the petition, in which … Continue reading

PTAB grants early, limited request for additional discovery where requesting party brought forth evidence showing usefulness

In Arris Group, Inc. v. C-Cation Technologies, LLC, the Patent Trial and Appeal Board (PTAB) took the rare step of granting a party’s request for additional discovery.  IPR2014-00746, Paper 15 (July 24, 2014). This decision illustrates the evidentiary showing required to justify additional discovery. Patent owner C-Cation sought production of indemnity agreements between petitioner Arris … Continue reading