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Federal Circuit confirms that disavowal of claim scope must be “clear and unmistakable”

In Continental Circuits LLC v. Intel Corporation, No. 2018-1076 (Fed. Cir. Feb. 8, 2019), a Federal Circuit panel confirmed that disavowal of claim scope, whether in the patent’s specification or prosecution history, must be “clear and unmistakable.”

The patents at issue in Continental Circuits were directed to “a multilayer electrical device . . . having a tooth structure” and “methods for making the same,” where the “teeth improve[d] the adhesion of the layers to one another.”  Continental Circuits, slip op. at 2-3.  The specification disclosed that “[o]ne technique for forming the teeth is . . . the … 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) standard for unexpired and proposed claims with the Phillips standard that is applied by district courts and the International Trade Commission (ITC).  The Patent Trial and Appeal Board already applies the Phillips standard to expired patent claims, which cannot be amended during AIA trials.… 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 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

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 challenges raised in the petition.” The wording suggests that “all challenges” refers to all grounds on which claims are challenged, rather than merely all challenged claims.

For pending trials in which only a subset of proposed grounds were originally instituted, panels of the Board may … 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

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 by Justice Thomas, the Court rejected the argument that patents are private rights subject to revocation only by Article III courts, holding instead that patents are public rights subject to revocation by the USPTO:

This Court has recognized, and the parties do … 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.”  The informative decisions, while not binding on subsequent panels, are meant to provide guidance for parties appearing before the Board.

Below are some important takeaways from these informative decisions:

  • A new reference that is cumulative of a reference considered during prosecution may be treated as
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 claims under 35 U.S.C. § 103, the Patent Owner argued that it did not receive adequate notice or opportunity to address certain portions of the Michelson reference upon which the Board largely based its obviousness finding. The Federal Circuit agreed in part.

The … 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. § 42.73(d)(3)(i), which states in relevant part, “A patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim,” … 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), citing to Paper 58 (May 6, 2016).

To arrive at its decision, the Board analyzed three factors: “(i) whether a party has performed conduct that warrants sanctions; (ii) whether the moving party has suffered harm from that conduct; … 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 for obviousness over a combination of references. The Board instituted review of all claims on this ground and ultimately found all claims invalid for obviousness in its final written decision.

On appeal, the Federal Circuit upheld the Board’s claim constructions but vacated the … 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 after the Board issues its Institution Decision. 37 C.F.R. § 42.123. In particular, Section 42.123(a) states that a party may request to file a motion to submit supplemental information as long as (1) the request is made within one month … Continue Reading

PTAB denies patent owner’s motion to request a certificate of correction

A patent owner who wishes to use a certificate of correction to correct an alleged defect in a patent subject to a pending IPR must first obtain authorization from the PTAB before a request for certificate of correction can be filed. 37 CFR § 1.323. In Kingston Tech. Co., Inc. v. CATR Co., LTD., the Board denied the patent owner’s motion to request a certificate of correction. IPR2015-00559, Paper 44 (Nov. 6, 2015).

During a conference call with the Board, the patent owner sought authorization to file a motion to request a certificate of correction with respect to … 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 infringement, the Petitioner filed a petition seeking CBM review of the patent. In a preliminary response to the petition, the Patent Owner asserted that the PTAB should not institute CBM review because the Petitioner did not demonstrate that the patent qualifies as … Continue Reading

PTAB provides guidance on demonstrating public accessibility of prior art

The familiar standard for anticipation under 35 U.S.C. § 102 states, in part, that a “person shall be entitled to a patent unless” the claimed invention was “described in a printed publication . . . or otherwise available to the public before the effective filing date of the claimed invention.” The question of when a document was published or otherwise available can become the focal point of invalidity disputes. In addition, the issue of public accessibility—the key criteria for publication—is also often hotly contested. See In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986).

The PTAB gave … Continue Reading

PTAB rules that standing for CBM proceeding must only exist at the time a petition is filed

In Westlake Services, LLC v. Credit Acceptance Corp., the PTAB denied a Patent Owner’s request for authorization to file a motion to terminate. IPR2014-00176, Paper 41 (Sept. 3, 2015). In so ruling, the Board made it clear that standing for a CBM proceedings must only exist at the time a petition is filed.

During a conference call to discuss the Patent Owner’s request to terminate the CBM proceeding, the Patent Owner argued that: 1) AIA § 18(a)(1)(B) and 37 CFR § 42.302(a) “impose a standing requirement that continues throughout a covered business method patent proceeding, not just at … 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 Sept. 25, 2015).

The Patent Owner moved for sanctions requesting dismissal of the Petitioner’s Petitions for abusing the IPR process, arguing that (1) the Petitioner did not have a competitive interest in the challenged patents or technology, and (2) the Petitioner was using … 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 patent in an infringement suit filed by the assignee. The doctrine prevents the intrinsic unfairness of allowing an assignor “to sell something and later to assert that what was sold is worthless.”

In prior decisions, the Board had held that assignor estoppel is … 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 to institution of the CBM, the Patent Owner advised the Board that a District Court had determined that each of the challenged claims is directed towards patent-ineligible subject matter under § 101, and that the District Court decision was on appeal to the … 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 Owner Response, the Patent Owner argued that one of the references, CFTC, did not qualify as a prior art printed publication within the meaning of § 102(b) because the Petitioner “fail[ed] to demonstrate that CFTC was disseminated to the relevant public before the … Continue Reading

PTAB considers a copyright notice to be evidence of publication

In LG Electronics, Inc. v. Advanced Micro Devices, Inc., the PTAB held that a copyright notice in a cited reference was evidence of publication as of the copyright date. The PTAB also held that a date without a copyright notice in another cited reference was not evidence of publication as of that date. IPR2015-00329, Paper 13 (Jul. 10, 2015).

One of the references in question was a technical specification for a USB controller. The front page of the document had the following copyright notification: “© 1997 National Semiconductor Corporation.” The word “PRELIMINARY” was also printed on the front … Continue Reading

PTAB confirms IPR petitions cannot be time-barred based on ITC complaint

Under 35 U.S.C. § 315(b), a petitioner, real party in interest, or privy of the petitioner has only one year after service of a complaint alleging infringement to request inter partes review of the patent-in-suit. In LG Electronics, Inc. v. Straight Path IP Group, Inc., the PTAB held that the one-year time bar set by § 315(b) applies only to civil actions for patent infringement filed in U.S. federal district courts, and not to an investigation concerning patent infringement by the U.S. International Trade Commission (“ITC”). IPR2015-00196, Paper 20 (May 15, 2015).

The ITC is a federal agency … 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 a patent under this chapter that results in a final written decision under section 328 (a) . . . may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner … Continue Reading

PTAB confirms that it lacks authority to stay prosecution of related applications

In Chums, Inc. and Croakies, Inc. v. Cablz, Inc., the PTAB denied Petitioner’s request to file a motion to suspend prosecution of patent applications that were related to the patent that was the subject of the IPR proceeding. IPR 2014-01240, Paper 22 (May 8, 2015).

Petitioner “requested permission to file a motion to suspend prosecution of U.S. Patent Application Nos. 13/660,706 and 14/307,122 (‘the related patent applications’),” alleging “that one or more claims in the related patent applications were patentably indistinct from at least one claim in U.S. Patent No. 8,366,268 (‘the ’268 patent’),” which was the subject of … Continue Reading