Federal Circuit criticizes PTAB for changing claim construction midstream

By Stephanie DeBrow (US) on September 9, 2016 Posted in Claim construction, Federal Circuit

In SAS Institute, Inc. v. ComplementSoft, LLC, the Federal Circuit criticized the PTAB for changing its claim construction “midstream” and vacated the Board’s finding that, under the newly adopted construction, one of the claims in the Patent Owner’s software patent was valid. Nos. 2015-1346, 2015-1347 (Fed. Cir. Jun. 10, 2016). In its institution decision, the … Continue reading

Federal Circuit rejects PTAB’s attempt at burden-shifting

By on August 19, 2016 Posted in Federal Circuit

In In Re Magnum Oil Tools Int’l, Ltd., the Federal Circuit found that the PTAB had improperly used its IPR institution standard—a reasonable likelihood that the petitioner would prevail as to at least one of the claims challenged in the petition—as justification for shifting the burden of persuasion and burden or production onto the Patent … Continue reading

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

By on August 9, 2016 Posted in Federal Circuit

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 … Continue reading

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

By Michelle Wang (US) and James Crawford (US) on May 27, 2016 Posted in Claim construction, Federal Circuit

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. … Continue reading

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

By Andrew Liddell (US) on May 20, 2016 Posted in Federal Circuit

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. … Continue reading

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

By on May 13, 2016 Posted in Federal Circuit, Institution decisions

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 … Continue reading

New PTAB Rules Take Effect May 2, 2016

By Andrew Liddell (US) and Talbot Hansum (US) on April 28, 2016 Posted in Claim construction, Discovery, Experts, Institution decisions, Motions to amend

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 … Continue reading

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

By Tom Owens (US) on April 22, 2016 Posted in Federal Circuit, Institution decisions

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 … Continue reading

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

By on April 13, 2016 Posted in Federal Circuit, Motions to amend

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, … Continue reading

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

By Tom Owens (US) on April 1, 2016 Posted in Federal Circuit

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. … Continue reading