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Analysis of USPTO post-issuance proceedings

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

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By Tom Owens (US) on April 1, 2016

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…

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Federal Circuit rules that PTAB failed to adequately describe its reasoning for obviousness finding

By NRF Digital Team on March 21, 2016

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 Cir. Jan. 22, 2016) (nonprecedential).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…

Federal Circuit rules that PTAB has full discretion to deny request to file motion for supplemental information

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By Andrew Liddell (US) on March 8, 2016

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.

Federal Circuit weighs in again on reviewability of institution decisions

By NRF Digital Team on February 23, 2016

In a recent case affirming the PTAB’s final decision of invalidity, the Federal Circuit held that it lacks jurisdiction to review whether the Board improperly instituted a CBM Review on a ground not asserted in the petition. SightSound Techs., LLC …

Federal Circuit approves having same PTAB panel make both institution and final decisions in IPR proceedings

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By James Crawford (US) on February 19, 2016

In affirming a PTAB ruling that the challenged patent was invalid for obviousness, a split Federal Circuit panel recently held that neither the America Invents Act nor the Constitution precludes the same PTAB panel that made the decision to institute…

Federal Circuit holds that PTAB is not bound by findings made in Institution Decisions

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By Andrew Liddell (US) on February 12, 2016

A unanimous Federal Circuit panel recently affirmed the PTAB’s judgment holding that the Petitioner failed to satisfy its burden of proving that the challenged claims of the patent were obvious. TriVascular v. Samuels, No. 15-1631 (Fed. Cir. Feb. 5…

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

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By Allan Braxdale (US) on January 14, 2016

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…

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

Photo of Wayne St. Hugh Livingstone (US)
By Wayne St. Hugh Livingstone (US) on December 18, 2015

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…

Refused Cross-Examination Results in PTAB Striking Non-Party Witness Declaration

Photo of George Jordan (US)
By George Jordan (US) on December 9, 2015

In HTC Corp. v. NFC Tech., LLC, the PTAB granted the Petitioner’s motion to strike and expunge the declaration of the Patent Owner’s non-party witness, who refused to submit to cross-examination. IPR2014-01198, Paper 41 (Nov. 6, 2015).

The…

PTAB provides guidance on demonstrating public accessibility of prior art

By NRF Digital Team on November 30, 2015

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…

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Patent Challenges provides reports, updates, commentary and insight on new decisions and other happenings related to post-issuance proceedings (IPR, PGR and CBM) at the Patent Trial and Appeal Board of the USPTO. Contributors are drawn from our deep roster of IP lawyers with experience in patent litigation, patent prosecution and post-issuance proceedings.

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