CAFC requires weighing diligence evidence as a whole and rejects “scouring” for gaps

By Jeff Kitchen (US) on June 15, 2017 Posted in Federal Circuit

In Perfect Surgical v. Olympus America, Inc., the Federal Circuit found harmful error in the PTAB’s diligence framework and conclusions, thereby potentially lowering the bar required to establish diligence in PTAB cases. Case No. 2015-2043 (Fed. Cir. Nov. 15, 2016). In the underlying IPR, the Board found a patent owner did not prove the inventor continuously … Continue reading

No due process violation where PTAB “previews” new construction at oral hearing

By Stephanie DeBrow (US) on June 8, 2017 Posted in Claim construction, Federal Circuit

In Intellectual Ventures II LLC v. Ericsson Inc.,[1] the Federal Circuit considered whether the PTAB’s adoption of a new claim construction in its Final Written Decision constitutes a violation of the parties’ due process. Intellectual Ventures argued that it was denied due process because the construction set forth in the Board’s Final Written Decision was … Continue reading

EDTX judge rules that IPR estoppel applies to all grounds included in the petition, except those that are denied for purely procedural reasons

By Tom Owens (US) on May 24, 2017 Posted in Estoppel

In Biscotti Inc. v. Microsoft Corp., Magistrate Judge Roy S. Payne of the Eastern District of Texas recommended finding that the IPR estoppel statute, 35 U.S.C. § 315(e), applies to all grounds included in an IPR petition except those that are denied institution for purely procedural reasons, such as for redundancy. Case No. 2:13-CV-01015-JRG-RSP (E.D. … Continue reading

District Court holds that IPR estoppel does not apply to grounds denied institution on the merits

By Tom Owens (US) on February 7, 2017 Posted in Institution decisions

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 … Continue reading

Federal Circuit rules that PTAB’s decision on time-bar is still not appealable

By Michelle Wang (US) on January 19, 2017 Posted in Federal Circuit

A Federal Circuit panel recently confirmed that 35 U.S.C. § 314(d) does not permit appeal of a decision by the PTAB that an IPR petitioner is not time-barred under 35 U.S.C. § 315(b). Wi-Fi One, LLC v. Broadcom Corporation, No. 2015-1944 (Fed. Cir. Sep. 16, 2016). Patent Owner unsuccessfully argued to the PTAB that Petitioner … Continue reading

Federal Circuit Rejects PTAB’s Analysis of Motion to Amend

By James Crawford (US) on November 16, 2016 Posted in Federal Circuit, Motions to amend

In Veritas Technologies LLC v. Veeam Software Corporation, the Federal Circuit concluded that the PTAB erred in denying Patent Owner’s motion to amend claims in an IPR proceeding and remanded to the PTAB for further consideration of the substitute claims submitted in the motion. No. 2014-00090 (Fed. Cir. Aug. 30, 2016). In the IPR, the … 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

PTAB Usually Misses the One-Month Pendency Goal for Requests for Rehearing

By Tom Owens (US) on October 6, 2016 Posted in Statistics

No statute or rule establishes a time limit for the Board to decide a request for rehearing. However, the Trial Practice Guide states that the Board “envisions” that decisions will be made within approximately one month unless additional briefing is required. An analysis of recent decisions shows that the Board is not meeting this stated … Continue reading

Federal Circuit Rejects PTAB’s Reliance on “Common Sense” to Supply Missing Claim Limitation

By Jeff Kitchen (US) on September 22, 2016 Posted in Federal Circuit

In Arendi S.A.R.I. v. Apple Inc., et al., the Federal Circuit reversed a PTAB decision finding all instituted claims in an IPR invalid as obvious based on the prior art and “common sense.” No. 2015-2073 (Fed. Cir. Aug. 10, 2016). The challenged patent claimed, in part, a method for accessing a document and searching for … Continue reading