Federal Circuit weighs in again on reviewability of institution decisions

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 v. Apple Inc., 809 F.3d 1307 (Fed. Cir. 2015). The Federal Circuit, however, reiterated that … Continue reading

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

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 IPR from also rendering the final written decision on patent validity. Ethicon Endo-Surgery, Inc. v. … Continue reading

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

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, 2016). In so ruling, the Federal Circuit addressed whether the Board is bound by any findings … Continue reading

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

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

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

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

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 Patent Owner submitted a declaration of a non-party witness residing in France to support its alleged earlier … Continue reading

PTAB provides guidance on demonstrating public accessibility of prior art

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

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

A Prima Facie Case Is Not Required for Institution

In Nestlé Purina Petcare Co. v. Oil-Dri Corp. of America, the PTAB held that the “reasonable likelihood” standard for institution of trial does not require that the Petitioner establish a prima facie case of unpatentability. IPR2015-00737, Paper 16 (Sept. 23, 2015). After a decision instituting trial, the Patent Owner filed a rehearing request arguing that the … Continue reading

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

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