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 pending trials.

Many listener questions sought to clarify the impact on prior institution decisions in pending trials. Several addressed the apparent daylight between the memo’s stated intent to consider “all challenges” in instituted trials going forward, and the less-concrete statement that “for pending trials … 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 claim-by-claim “partial institution” practice was based on the United States Patent and Trademark Office (USPTO) rule stating that the Board “may authorize the review to proceed on all or some of the challenged claims.” 37 CFR … 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 alleged infringement of claims that had survived an IPR trial.  The petitioner in the trial, who was also a defendant in the infringement suit, had asserted three obviousness grounds: (1) Shoemaker, Dhallan, and Binladen, (2) Dhallan and Binladen, and (3) Quake and … 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 Petitioner challenged claims 1-20 of the patent at issue in view of seven different prior art grounds. The Board instituted review of claims 1-16 on one obviousness ground, declined to institute review on four other grounds it deemed to be “redundant” to 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 or trial before the Office. A revised Trial Practice Guide is forthcoming.

The published final rule describing the amended rules is available here. A redline comparing the amended rules to the old rules is available here.

We detail the major … 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 of claims, but denied an anticipation ground against the same claims solely on the basis that the ground was redundant. The Board did not address the substance of the anticipation ground, nor did it explain how the ground was redundant. In the final … 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 it has jurisdiction to review whether the Board improperly determined that the patents qualify as CBM patents.

While 35 U.S.C. § 324(e), like its IPR counterpart § 314(e), bars appellate review of the Board’s determination of whether to institute a CBM Review, the … 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. Covidien LP, No. 2014-1771 (Fed. Cir. Jan. 13, 2016). The Federal Circuit also found that having the same PTAB panel decide both determinations is consistent with the “efficiency” goals of the AIA.

In its appeal to the Federal Circuit, Ethicon made two main … 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 it makes in its Institution Decision.

In its IPR Petition, TriVascular challenged the claims of the Samuels patent for a vascular stent that could be affixed to the vascular wall via “an inflatable and deflatable cuff.” The Board instituted review on two obviousness … 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 Board misapprehended the “reasonable likelihood” standard for institution. The Patent Owner argued that the standard requires petitioners to establish a prima facie case of unpatentability, which, Patent Owner argued, the Petitioner failed to do.

The Board held that it applied 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 99/035818) anticipated the claims. Monroe was published on July 15, 2009, while the subject patent issued from a child application filed on January 3, 2003, which was a divisional of a parent application filed on January 12, 1998. The parent application, however, was … 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 reference that had been previously presented to the USPTO. IPR2015-00483, Paper 10 (Jul. 15, 2015).

The reference at issue had been cited in prosecution of a divisional application and listed on an IDS in an ex parte reexamination proceeding. While … 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 matter, the Board found that the Petitioner failed to identify all related matters (e.g., lawsuits, patent applications, etc.) as required under 37 C.F.R. § 42.8(b)(2) and 35 U.S.C. § 312(a)(4). That failure could have been sufficient independent grounds to deny the petition, but … 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 it lacks jurisdiction with respect to appeals of institution decisions.

Under § 325(a)(1), a post-grant review proceeding may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest … 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 version of which we wrote about here, the Federal Circuit held that judicial review of a determination to institute IPR proceedings is precluded by statute. The operative statutory provision states that “[t]he determination by the Director whether to institute an inter partes review … 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 that it looks beyond the express claim language in assessing CBM-eligibility.

A threshold inquiry for instituting a CBM review is whether the challenged patent “claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or … 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 non-provisional application filed after the challenged patent’s priority date. However, the Panjabi application claimed priority to a provisional application filed before the priority date. Thus, Panjabi would be prior art if the subject matter relied upon in Panjabi was disclosed in the … 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 the first conference paper as prior art. In contrast, the declaration of a librarian supported by a library acquisition record and a patent citation was deemed sufficient to establish the second conference paper as prior art. Detailed explanations of the papers were not … 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 the petition failed to show that the reference was publicly accessible.

The non-patent reference at issue included a copyright notice, an International Standard Book Number (ISBN) and date, and a library seal. In its preliminary response, the Patent Owner asserted, inter alia, … 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 because the patent failed to meet the statutory definition of a “covered business method patent.” CBM2014-00162, Paper 11 (Feb. 2, 2015).

Patent Owner argued that because claims 1-12 had been statutorily disclaimed, Petitioner had not shown the patent to be a covered business … 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 of discretion was shown.

The challenged claims recite a lighting device that produces light of varying color. Rejecting Petitioner’s argument that the Board failed to analyze an “express definition” of the claim limitation “color changing cycle” provided in the Petition, the Board explained … 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 the Preliminary Response not be considered in determining whether to institute the IPR.

37 C.F.R. § 42.107(a) permits a Patent Owner faced with an IPR petition to file a Preliminary Response setting forth reasons why no IPR should be instituted. However, 37 C.F.R. … 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 noted its previous holding (discussed here) that 35 U.S.C. § 314(d) precludes interlocutory review of decisions whether to institute IPR. The Court then found that § 314(d) excludes all review of these decisions, including after the Board issues a final decision, … Continue Reading

CAFC denies appeals of institution and non-institution decisions

In three recent decisions, the CAFC addressed whether the PTAB’s decision to institute an IPR is appealable.

For an IPR petition to be instituted, it must show a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. According to the statute, the PTAB’s decision whether to institute is “final and nonappealable.”

In St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014), the petitioner filed an IPR petition over two years, after being served with an infringement counterclaim in … Continue Reading