PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.
Recent Blog Posts
- I Object! The PTAB is Leading Practitioners to Inefficient Depositions Recently, the PTAB excluded Patent Owner expert witness testimony because during the expertâ€™s deposition, on redirect, Patent Ownerâ€™s counsel asked leading questions.Â IPR2014-01146, Paper 36, pg. 6.Â The PTAB relied on Federal Rule of Evidence 611(c), and cited to McCormick on Evidence, Â§ 6 (7th ed. 2013), which states â€œ[a] leading question is one that suggests to the witness the answer desired by the examiner.â€�Â Is the PTAB, in reading a cold record and applying an unforgiving reading of the... More
- PTAB Drops the Hammer on Petitioners: Five IPR Petitions Denied on the Same Day The Patent Trial and Appeal Board (PTAB) is granting inter partes review (IPR) petitions at a 70% clip.Â Imagine the surprise, then, when on a single day, September 16, 2015, petitioners went an incredible 0 for 5â€”the PTAB denied five petitions for IPR and granted none!Â It seemed like a statistical improbability.Â Maybe a signal that the tides have turned for patent challengers?Â Â â€¦ on a single day, September 16, 2015, petitioners went an incredible 0 for 5… At first glance, there... More
- PTAB Denies CBM Petition for Lack of Standing, Interpreting â€œPriviesâ€� as Customers and Not Suppliers Acxiom Corp. v. Phoenix Licensing LLC (CBM2015-00068, Paper 23) presents a rare denial of a petition for covered business method review (as of June 25, 2015, CBM petitions are granted at a rate of over 70%).Â In denying the petition, Â the PTAB stressed that, to have standing, a petitioner must have been sued (or threatened with suit), or be a privy to a party that has been sued (or been threatened with suit).Â And “privy” in this context is synonymous... More
- Footnote on Claim Amendment More Interesting than Federal Circuit Holding? Last Tuesday, for the first time ever, the Federal Circuit reversed the PTAB in an IPR decision by, among other things, ratcheting back the “broadest reasonable construction” standard for claim construction by declaring the PTABâ€™s construction “unreasonable.” Â The Court said that, “[e]ven under the broadest reasonable interpretation, the board’s construction ‘cannot be divorced from the specification and the record evidence,’ and ‘must be consistent with the one that those skilled in the art would reach.'” Â Microsoft v. Proxyconn, 2014-1542, -1543... More
- PTAB Relaxing its Application of Law Governing IPR Claim Amendments As discussed yesterday, on June 5, 2015, for just the second time in IPR history, the Board granted a patent ownerâ€™s contested motion to amend claims. Â Reg Synthetic Fuels, LLC v. Neste Oil Oyj, IPR2014-00192 (PTAB June 5, 2015).Â¹Â Are the facts of Neste really so different from the dozens of motions to amend the Board has previously denied, or has something changed? From the beginning, the Board raised a very high hurdle for claim amendments.Â The Board often cited Idle... More
- Prior Art Must be Analogous to the Entire Scope of Problem On May 26, 2015, the Board issued its final written decision in Schott Gemtron Corp. v. SSW, IPR2014-00367, confirming the patentability of all of the challenged claims of U.S. Patent No. 8,286,561 (â€œthe â€™561 patentâ€�).Â¹Â The Board concluded the prior art on which the petitioner, Schott Gemtron Corporation, relied was not analogous to the â€™561 patentâ€™s claimed invention and, more particularly, the art was not reasonably pertinent to all the problems the inventor faced.Â The â€™561 patent describes refrigerator shelving that has... More