Topic: Institution decisions

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More SAS: PTAB “May” Revoke Institution in Some Pending Trials

The Patent Trial and Appeal Board today hosted a “Chat with the Chief” webinar to elaborate on the practical effects of its April 26 memo implementing the Supreme Court’s decision in SAS Institute Inc. v. Iancu. Of particular note is that the Board seemingly intends to consider revoking some partial institution decisions to retroactively de-institute … 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

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 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

New PTAB Rules Take Effect May 2, 2016

The Patent Office has published a final rule with amendments to 37 CFR § 42, et seq., governing IPR, CBM, PGR, and derivation proceedings before the Patent Trial and Appeal Board. The new rules take effect Monday, May 2, 2016 and apply to all AIA petitions filed on or after that date and to any ongoing proceeding … 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 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 holds that PTAB is not bound by findings made in Institution Decisions

A unanimous Federal Circuit panel recently affirmed the PTAB’s judgment holding that the Petitioner failed to satisfy its burden of proving that the challenged claims of the patent were obvious. TriVascular v. Samuels, No. 15-1631 (Fed. Cir. Feb. 5, 2016). In so ruling, the Federal Circuit addressed whether the Board is bound by any findings … 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 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 institutes IPR based on prior art that was previously presented to the USPTO

Under 35 U.S.C. § 325(d), the PTAB “may take into account whether, and reject [a] petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” In Microsoft Corp. v. Parallel Networks Licensing, LLC, the Board instituted an IPR even though institution was primarily based on a prior art … 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

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

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

PTAB holds patent CBM-eligible because of its application in the banking industry

In a recent CBM institution decision, the PTAB held at least one claim in the challenged patent was directed to a financial product or service because the claimed invention has application in the banking industry. Informatica Corp. v. Protegrity Corp., CBM2015-00010, Paper 13 (May 11, 2015). This decision appears to conflict with prior Board decisions, in … 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

Lessons learned in establishing conference papers as prior art in IPR petitions

In Hughes Network Sys., LLC v. Cal. Inst. of Tech., the PTAB addressed a Patent Owner’s challenge to the availability of two papers from the same conference (albeit different years) as printed publications for use against the challenged claims. IPR2015-00060, Paper 18 (Apr. 27, 2015). A declaration of the co-author was deemed insufficient to establish … Continue reading

PTAB denies institution based on failure to prove publication of non-patent reference

In Square, Inc., v. Unwired Planet, LLC, the PTAB denied the Petitioner’s request for rehearing of a decision not to institute a Covered Business Method Review on prior art grounds because the petition failed to show that a non-patent reference was a printed publication. CBM2014-00156, Paper 22 (February 26, 2015). Specifically, the Board held that … Continue reading

PTAB emphasizes importance of claim language in determination of CBM-eligibility

In, Inc. v. Applications in Internet Time LLC, the PTAB considered the effect of a statutory disclaimer, statements in the specification, and the patent’s assigned classification on whether the challenged patent was eligible for a Covered Business Method review. The Board ultimately declined to institute, finding that the patent was ineligible for CBM review … Continue reading

PTAB denies request for rehearing based on failure to construe claim limitation

In Jiawei Technology (HK) Ltd. v. Simon N. Richmond, the PTAB denied Petitioner’s Request for Rehearing of a decision not to institute an IPR. IPR2014-00937, Paper 24 (Feb. 6, 2015). Maintaining its decision that the Petitioner failed to properly address a claim limitation that was “critical” to understanding claim scope, the Board held no abuse … Continue reading

PTAB clarifies what qualifies as “new” testimony in a Preliminary Response

In B/E Aerospace, Inc. v MAG Aerospace Industries, LLC, the PTAB decided that testimonial evidence submitted in the Patent Owner’s Preliminary Response, which was created for related litigation, was “new” testimonial evidence under 37 C.F.R. § 42.107(c). IPR2014-01510, Paper 13 (Jan. 20, 2015). Thus, the Board ordered that the testimony and any associated arguments in … 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