Topic: General

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

By Vlada Wendel (US) and Michael Pohl (US) on March 21, 2023 Posted in General

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

Don’t Xerox conclusory assertions in the expert declaration

By Michael Pohl (US) on February 21, 2023 Posted in General

Expert testimony can be critical to support or defend against invalidity challenges in AIA trials, but must be adequately explained to be effective. In Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 (PTAB Feb. 10, 2023), Director Vidal affirmed and designated as precedential a decision from the Patent Trial and Appeal Board (PTAB) that gave … Continue reading

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

By Michelle Wang (US) on March 13, 2019 Posted in General

Whether in the patent’s specification or prosecution history, the disavowal of claim scopemust be “clear and unmistakable.”… Continue reading

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

By Eagle Robinson (US) on May 9, 2018 Posted in Claim construction, General

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

By Eagle Robinson (US) on April 30, 2018 Posted in General, Institution decisions

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”

By Tom Owens (US) and Eagle Robinson (US) on April 29, 2018 Posted in General

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

By Tom Owens (US) on April 25, 2018 Posted in Estoppel, General, Institution decisions

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

By Eagle Robinson (US) on April 24, 2018 Posted in General

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

By Tom Owens (US) on April 5, 2018 Posted in General

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

By Taylor Mauze (US) on June 29, 2017 Posted in Federal Circuit, General

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

By Allan Braxdale (US) on October 28, 2016 Posted in General

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

By on October 19, 2016 Posted in General

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

By on March 21, 2016 Posted in Federal Circuit, General

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

By Andrew Liddell (US) on March 8, 2016 Posted in Federal Circuit, General

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 patent owner’s motion to request a certificate of correction

By Allan Braxdale (US) on January 14, 2016 Posted in General

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 … Continue reading

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

By Wayne St. Hugh Livingstone (US) on December 18, 2015 Posted in General

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 provides guidance on demonstrating public accessibility of prior art

By on November 30, 2015 Posted in General

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 … Continue reading

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

By Allan Braxdale (US) on November 13, 2015 Posted in General

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 … Continue reading

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

By Talbot Hansum (US) on October 29, 2015 Posted in General

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

By on October 19, 2015 Posted in General

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

By on October 7, 2015 Posted in General

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)

By Michelle Wang (US) and James Crawford (US) on September 29, 2015 Posted in General

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 considers a copyright notice to be evidence of publication

By Tom Owens (US) on August 6, 2015 Posted in General

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 … Continue reading

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

By Brandy Nolan (US) on July 17, 2015 Posted in General

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 … Continue reading