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A “known technique” only needs to be a suitable replacement to support a conclusion of obviousness

A claim that recites a combination of prior art elements may be obvious when the combination merely involves the use of a “known technique” that “has been used to improve one device” to “improve similar devices in the same way.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).  In Intel Corp. v. … Continue reading

USPTO Proposes to Narrow Claim Interpretation in AIA Patent-Validity Trials

In a move that may make it harder to invalidate—but also potentially easier to limit the scope of—challenged patents, the US Patent and Trademark Office (USPTO) on May 8 proposed narrowing the interpretation of patent claims during AIA validity trials. In the Notice of Proposed Rulemaking, the USPTO proposes replacing the broadest reasonable interpretation (BRI) … Continue reading

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

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

USPTO Giveth and USPTO Taketh Away: Supreme Court Upholds Constitutionality of AIA Reviews

In its long-awaited Oil States decision, the United States Supreme Court today held that the Constitution does not preclude the United States Patent and Trademark Office (USPTO) from reviewing the validity of issued US patents. Oil States Energy Servs., Inc. v Greenes Energy Group, LLC, 584 U.S. ___, No. 16-712 (2018). In a 7-2 decision authored … 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

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