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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
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