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“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

Federal Circuit clarifies what IPR petition must disclose to provide adequate notice to Patent Owner

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

PTAB denies Petitioner’s motion to suspend prosecution of co-pending applications

In Telebrands Corp. v. Tinnus Enterprises, LLC, the Board denied Petitioner’s request for authorization to file a motion to suspend prosecution of co-pending patent applications that were continuations of the challenged patent. PGR2015-00018, Paper 62 (Aug. 29, 2016). In several decisions prior to Telebrands Corp., the Board found that the estoppel provision of 37 C.F.R. … Continue reading

PTAB grants inaugural award of attorneys’ fees

In RPX Corporation v. Applications in Internet Time, LLC, the PTAB awarded attorneys’ fees for the first time in an AIA post-issuance proceeding. The Board had previously granted the Petitioner’s motion for sanctions in response to the Patent Owner’s improper disclosure of confidential information in violation of the Board’s Standing Default Protective Order. IPR2015-01750, Paper 69 (Jul. 1, 2016), … Continue reading

Federal Circuit rules that PTAB failed to adequately describe its reasoning for obviousness finding

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 Cir. Jan. 22, 2016) (nonprecedential).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

Federal Circuit rules that PTAB has full discretion to deny request to file motion for supplemental information

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

PTAB denies request for termination, finding it amounted to a motion to stay

In PNC Bank NA v. Parus Holdings, Inc., the PTAB denied the Parties’ joint request for authorization to file a motion to terminate because the requested “termination” would merely amount to a stay of proceedings pending appeal in an underlying District Court case. CBM2015-00109, Paper 10 (Nov. 9, 2015). After being sued in District Court for patent … Continue reading

PTAB Declines to Sanction Petitioner Based on Alleged “Profit Motive”

In Coalition for Affordable Drugs VI, LLC v. Celgene Corp., a six-judge panel denied a Patent Owner’s Motion for Sanctions against a Petitioner allegedly using IPRs to attack the Patent Owner’s primary product lines in an apparent attempt to deflate stock prices and short-sell the Patent Owner’s stock. IPR2015-01092, 01096, 01102, 01103, and 01169 (PTAB … Continue reading

PTAB confirms that assignor estoppel does not apply in IPRs

The PTAB recently confirmed that the doctrine of assignor estoppel does not apply to IPR proceedings. Esselte Corp. v. Sanford L.P., IPR2015-00771, Paper 13 (Aug. 28, 2015). Assignor estoppel is an equitable doctrine that generally prohibits an assignor of a patent, or one in privity with him, from later challenging the validity of the assigned … Continue reading

PTAB refuses to terminate CBM on alleged mootness grounds

In Allscripts Healthcare Solutions, Inc. v. MyMedicalRecords, Inc., a Patent Owner requested termination of an instituted CBM as moot based on a final judgment in an underlying District Court case. CBM2015-00022, Paper 20 (August 26, 2015). The PTAB, in refusing to terminate the CBM, discussed its rationale and provided guidance for future termination requests. Prior … 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 confirms that estoppel does not bar subsequent petitions on non-instituted claims

In Westlake Services, LLC v. Credit Acceptance Corp., the PTAB denied a Patent Owner’s motion to terminate a CBM proceeding, holding that estoppel under 35 U.S.C. § 325(e)(1) does not apply to claims previously denied institution. CBM2014-00176, Paper 28 (May 14, 2015). 35 U.S.C. § 325(e)(1) states that “[t]he petitioner in a post-grant review of a claim in … Continue reading

PTAB decides that district court ruling favorable to Patent Owner does not justify stay of CBM proceedings

We have previously written about stays of litigation before the PTAB has acted on a petition for IPR or CBM review. A recent Board decision addresses a contrasting circumstance: staying a CBM proceeding in light of activity in litigation. In Samsung Elecs. Am., Inc. v. Smartflash LLC, (and related CBM review proceedings), the Board denied … Continue reading

Federal Circuit rules it has no interlocutory jurisdiction on denial of motion to stay until CBM Review is instituted

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

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

PTAB grants Patent Owner’s adverse judgment request, thereby barring joinder of subsequent IPR petition

In Artsana USA, Inc. v. Kolcraft Enterprises, Inc., the PTAB granted the Patent Owner’s request for adverse judgment under 37 C.F.R. § 42.73(b) and found the challenged patent claims to be unpatentable. IPR2014-01053, Paper 24 (April 3, 2015). In so doing, the Board prevented a subsequently-filed petition from being joined to the IPR-at-issue and effectively … Continue reading