PTABWatch Blog

http://www.ptabwatch.com/author/hkissling/

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

  • Federal Circuit Refuses to Reweigh Factual Findings, But PTAB’s Conclusory Statements Are Insufficient The Federal Circuit’s precedential decision in In re: Warsaw Orthopedic, Inc., No. 2015-1050, 2015-1058 (Fed. Cir. Aug. 9, 2016), highlights recurring themes in appeals of PTAB IPR decisions.  On one hand, the Federal Circuit is reluctant to overturn a PTAB decision canceling claims for obviousness based on Patent Owner’s assertions that the PTAB failed to properly weigh certain facts found in reaching its decision.  On the other hand, the Federal Circuit will not hesitate to vacate and remand PTAB decisions... More
  • En Banc Rehearing Petition Denied – PTAB Retains Authority to Institute IPR and Issue Final Decision We previously reported on the Federal Circuit’s decision that neither the AIA nor the Constitution precludes the same PTAB panel from rendering both institution and final decisions in Ethicon Endo-Surgery, Inc. v. Coviden LP, No. 2014-1771 (Fed. Cir. 2016).  Last week, in a 10-1 decision, the Federal Circuit denied Ethicon’s petition for rehearing en banc. The petition was denied without comment by the majority, providing no response to the amici briefs filed by the Biotechnology Industry Organization and Pharmaceutical Research and... More
  • Federal Circuit to PTAB – Explain yourself!! The Federal Circuit recently vacated or reversed-in-part two PTAB final written decisions on the basis that the PTAB did not adequately describe its reasons for concluding the claimed invention is obvious.  In both instances, the court criticized the Board’s “broad, conclusory statements” regarding one of ordinary skill’s motivation to adjust prior art teachings.  These decisions highlight an attractive grounds for appealing a PTAB’s final written decision. In Cutsforth, Inc. v. Motivepower, Inc., No. 2015-1316 (Fed. Cir. Jan. 22, 2016), the Federal... More
  • Failure to Establish Published U.S. Application is Prior Art Dooms IPR under Dynamic Drinkware The PTAB’s final written decision in Ariosa Diagnostics, Inc. v. Illumina, Inc., IPR2014-01093, should serve as a reminder to Petitioners challenging claims under 35 U.S.C. § 102(e) – take care to establish that your reference is prior art.  Claims 1-22 of U.S. Patent No. 7,955,794 relate to methods directed to multiplexing amplification and/or genotyping reactions of target nucleic acid sequences.  The patent is also the basis of the co-pending district court case, Illumina, Inc. v. Ariosa Diagnostics, Inc., Case No. 3:14-cv-01921... More
  • PTAB Revises Claim Construction in Final Written Decision, But Still Finds Claims Invalid On January 11, 2016, the PTAB issued a final written decision in ABS Global, Inc. et al. v. XY, LLC, IPR2014-01161, holding claims 1 and 3 of U.S Patent No. 7,195,920 invalid for obviousness.  The IPR is part of a long-running dispute between the parties involving multiple issues and multiple patents, as reported previously.  The ‘920 patent relates to methods of separating X and Y chromosome bearing sperm cells to facilitate sex selection in offspring produced by artificial insemination.  The claims... More
  • Federal Circuit Affirms PTAB Panel’s Authority to Institute IPRs and Issue Final Decision The AIA explicitly bestows the USPTO Director with the authority to institute IPRs and the PTAB with the authority to decide the ultimate question of patent validity.  The Director delegated the authority to institute IPRs to the Board, but is it proper to assign the decision to the same APJs that render a final decision?  A split panel at the Federal Circuit held that neither the AIA nor the Constitution precludes the same PTAB panel from rendering both institution and... More
  • CAFC Confirms Constitutionality of Inter Partes Review The Federal Circuit rejected a patentee’s appeal arguing that inter partes review is unconstitutional for violating Article III and the Seventh Amendment right to a jury trial.  MCM Portfolio LLC v. Hewlett-Packard Co., No. 2015-1091 (Fed. Cir. December 2, 2015).  The precedential decision affirms the PTAB’s authority to adjudicate the validity of issued patents. HP petitioned for inter partes review of various claims of MCM’s U.S. Patent No. 7,162,549, directed to methods and systems for coupling flash memory cards to a computer... More
  • IPR Institution Decision Precluded as Evidence in Litigation, Again No precedential Federal Circuit decision addresses the effect of an IPR institution decision on parallel litigation tried before a jury. As a result, some district courts have allowed IPR institution decisions regarding a patent-in-suit to be presented as evidence in a pending litigation (see Evidence of Denial of IPR Institution Allowed in District Court Infringement Action), while many have not. On September 29, 2015, the District Court for the Western District of Wisconsin granted a defendant’s motion in limine requesting the... More
  • USPTO Proposes Single APJ Pilot Program for IPR Institution Citing an interest in improving efficiency, the USPTO published a request for comments on a proposed pilot program that would change the way Inter Partes Review petitions are decided.  Currently, a panel of three administrative patent judges (APJs) consider IPR petitions and determine whether to institute and conduct a trial.  The trial is then conducted before the same panel of APJs, which issues a final written decision on the merits.  Under the proposed pilot program, a single APJ would decide whether to... More
  • BRI is Here to Stay: Federal Circuit Confirms Broadest Reasonable Interpretation Standard of Claim Construction for IPRs A sharply divided Federal Circuit denied Cuozzo Speed Technology’s petition for rehearing en banc on the Broadest Reasonable Interpretation (BRI) standard used in Inter Partes Review (IPR).  Chief Judge Prost and Judges Newman, Moore, O’Malley, and Reyna voted for en banc review, but could not persuade Judges Lourie, Dyk, Wallach, Taranto, Chen, and Hughes to reconsider In re Cuozzo Speed Tech (Fed. Cir. 2015).  According to the dissent, IPR should employ the same claim interpretation standard as district court litigation because: IPR... More