Federal Circuit rules that PTAB may base IPR final decisions on evidence outside instituted grounds

In a recent decision affirming the PTAB’s obviousness findings in an IPR, the Federal Circuit confirmed that the Board may use prior art not cited in instituted grounds as evidence to support a final decision. Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., No. 2015-1721 (Fed. Cir. June 14, 2016).

In two IPR petitions, Biomarin challenged all claims of two Genzyme patents as being invalid for obviousness on multiple grounds. The Board instituted review of both patents on two grounds each and ultimately found all claims for both patents invalid as obvious in its final written decision.… Continue Reading

Federal Circuit provides guidance on broadest reasonable interpretation standard for claim construction in PTAB proceedings

In two recent cases, the Federal Circuit provided guidance on applying the broadest reasonable interpretation (BRI) standard for claim construction in IPR proceedings. PPC Broadband Inc. v. Corning Optical Communications RF, LLC, No. 2015-1361, 1366, 1368, 1369 (Fed. Cir. Feb. 22, 2016) (“PPC I”) and PPC Broadband Inc. v. Corning Optical Communications RF, LLC, No. 2015-1364 (Fed. Cir. Feb. 22, 2016) (“PPC II”).

In PPC I, the CAFC affirmed portions of the Board’s decision, vacated other portions, and remanded. The CAFC reviewed claim constructions for terms in claims that the Board previously found unpatentable as obvious. Recognizing that … Continue Reading

Federal Circuit Affirms PTAB’s Conclusion that Claims Reciting a Subsidy Are CBM Eligible

In Blue Calypso, LLC, v. Groupon, Inc., the Federal Circuit concluded that the Board did not exceed its authority to conduct a CBM review of Blue Calypso’s challenged patents, and that the Board correctly applied the statutory definitions of “covered business method” and “technological invention” to the challenged claims. Nos. 2015-1396, -1397, -1398, -1399, -1401 (Fed. Cir. Mar. 1, 2016).

While the Board’s decision to institute a covered business method review is “final and nonappealable” under the AIA, the AIA does not prevent the Federal Circuit from reviewing whether a claim is eligible for CBM review. See Versata Continue Reading

Federal Circuit rules that it has no jurisdiction to review PTAB’s refusal to institute redundant grounds

In a recent decision affirming the PTAB’s patentability determination in an IPR, the Federal Circuit confirmed that it has no jurisdiction to review the Board’s refusal to institute grounds it deemed to be redundant of instituted grounds. Harmonic, Inc. v. Avid Technology, Inc., No. 2015-1072 (Fed. Cir. Mar. 1, 2016).

In its IPR petition, the Petitioner challenged claims 1-20 of the patent at issue in view of seven different prior art grounds. The Board instituted review of claims 1-16 on one obviousness ground, declined to institute review on four other grounds it deemed to be “redundant” to the … Continue Reading

New PTAB Rules Take Effect May 2, 2016

The Patent Office has published a final rule with amendments to 37 CFR § 42, et seq., governing IPR, CBM, PGR, and derivation proceedings before the Patent Trial and Appeal Board. The new rules take effect Monday, May 2, 2016 and apply to all AIA petitions filed on or after that date and to any ongoing proceeding or trial before the Office. A revised Trial Practice Guide is forthcoming.

The published final rule describing the amended rules is available here. A redline comparing the amended rules to the old rules is available here.

We detail the major … Continue Reading

Federal Circuit holds that grounds denied institution as redundant are not subject to estoppel

In its recent decision in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., the Federal Circuit held that estoppel does not apply to grounds denied institution on the basis of redundancy. No. 2015-1116 (Fed. Cir. Mar. 23, 2016).

In its institution decision in an IPR, the Board instituted two obviousness grounds against a set of claims, but denied an anticipation ground against the same claims solely on the basis that the ground was redundant. The Board did not address the substance of the anticipation ground, nor did it explain how the ground was redundant. In the final … Continue Reading

Federal Circuit re-affirms and clarifies PTAB rules for motions to amend claims

In Nike, Inc. v. Adidas AG, the Federal Circuit re-affirmed the PTAB’s requirement that in IPR proceedings the Patent Owner must show the patentability of proposed substitute claims over both the prior art of record in the IPR and other prior art known to the Patent Owner. No. 2014-1719 (Fed Cir. Feb. 11, 2016). However, the court clarified that for known prior art not of record in the IPR, the Patent Owner needs only to submit a simple statement of patentability if the Patent Owner’s duty of good faith and candor to the PTO is not at issue.… Continue Reading

Federal Circuit approves PTAB practice of addressing patentability of only instituted claims in final written decisions

In Synopsys, Inc. v. Mentor Graphics Corp., a split Federal Circuit panel held that final written decisions in IPR proceedings need not address all claims challenged in the petition. Nos. 2014-1516, 2014-1530 (Fed. Cir. Feb. 10, 2016).

In its institution decision, the Board instituted review of only some of the claims challenged in the petition. In the final written decision, the Board found a subset of those instituted claims unpatentable. Consistent with Board practice, the final written decision did not address the patentability of challenged claims that were not instituted.

On appeal, in addition to substantively disputing the … 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

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