PTABWatch Blog

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

  • Supreme Court Declines to Weigh in on AIA Issues The Supreme Court recently issued orders (Oct. 3 and Oct. 11) denying several petitions for certiorari challenging aspects of AIA trials. As we previously reported, two of those petitions challenged the constitutionality of AIA trials and the Patent Office’s authority to cancel patent rights between private parties. Cooper v. Lee, __ S.Ct. __, 2016 WL 361681 (Oct. 11, 2016); MCM Portfolio v. Hewlett-Packard Co., et al., __ S.Ct. __, 2016 WL 1724103 (Oct. 11, 2016). On the same day, the... More
  • ChIPs Conference Coverage I had the opportunity to attend the ChIPs (Chiefs of Intellectual Property) conference in Washington DC this week and thought that several of the panels that I attended would be of interest to the PTABWatch readership.  The organization is focused on the advancement of women in tech, law, and policy and enjoys strong participation from the judiciary, PTO, copyright office, and many prominent in-house and private-practice attorneys. For more information about ChIPs, check out the website at One of the... More
  • A Limit on the Board’s Power – Denial of Motion to Amend Claims was Unreasonable While the Federal Circuit has accepted, en banc, the question of what a patent owner must demonstrate to the Board to obtain leave to amend its claims in an IPR as discussed in our earlier blog post (In re Aqua Products, No. 2015-1177 petition for rehearing en banc granted, 2016 WL 4375651 (Fed. Cir. Aug. 12, 2016)), the court provided some guidance this week on what is not a sufficient basis for denying a motion to amend. In Veritas Technologies LLC v.... More
  • Shhh, It’s a Secret: Failure to Maintain Confidentiality Can Be Costly On July 1, 2016, The Board awarded attorneys’ fees as a sanction for failure to comply with an agreed protective order. RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, IPR2015-01751, IPR2015-01752 (PTAB July 1, 2016). In these IPRs, the patent owner (AIT) disclosed the petitioner’s (RPX’s) confidential information to its president, an attorney representing it in a district court case to which RPX is not a party, and to the CFO of a non-practicing patent licensing company serving as... More
  • The PTAB Has No Sympathy for the Last Minute Filer Institution was denied in two IPR proceedings on the grounds that the petitions were filed more than one year after petitioner was served with a complaint alleging patent infringement. The documents were electronically filed but proof of payment of filing fees were one minute and nine minutes late, respectively. Additionally service had not been completed before the midnight deadline. In an order entered on May 23, 2016, institution was denied in both proceedings as barred by the one year statutory bar... More
  • Without Estoppel, Are Redundant Grounds Now a Petitioner’s Friend? The Federal Circuit recently confirmed the Board’s interpretation that § 315(e) estoppel does not take effect with respect to prior art that the Board declines to address as redundant. In two recent cases, Shaw Industries Group v. Automated Creel Sys., Nos. 15-1116, 15-1119, __ F.3d __, at*6-9 (Fed. Cir. Mar. 23, 2016) and HP, Inc. v. MPHJ Tech. Invs., No. 2015-1427, __ F.3d __, at *13 (Fed. Cir. Apr. 5, 2016) the court held that “the noninstituted grounds do not... More
  • When Might a Request for Rehearing of Final Decision Be Worthwhile? In an earlier blog post from last June, we were unable to find any successful Requests for Rehearing or Reconsideration of a Final Written Decision and concluded that, in most instances, such requests are generally a waste of resources. However, while the PTAB has continued to deny the vast majority of motions for rehearing of a final written decision, it has now granted a few. Those limited number of successful rehearing requests demonstrate that, where you can point to something... More
  • District Court Denies Recovery of PTAB Costs in Non-Exceptional Case On January 5, a district court denied defendant Westlake Services, LLC’s Motion for recovery of costs related to CBM petitions that invalidated certain of the patent claims asserted in the pending litigation and prompted plaintiff to voluntarily dismiss the district court case. Credit Acceptance Corp. v. Westlake Services, LLC, Case 13cv01523 (C.D. Cal. January 5, 2016). The court’s decision was governed by the language of the local rules identifying taxable costs. Because the local rules provided only recovery for “filing... More
  • Federal Circuit Weighs in on Use of Evidence Cited in a Reply In a decision last week, the Federal Circuit remanded for further consideration the Board’s final written decision concluding that the challenged claims of Verinata Health, Inc.’s U.S. Patent No. 8,318,430 were not obvious. See Ariosa Diagnostics v. Verinata Health,Inc., Case No. 2015-1215, 2015-1226 (Fed. Cir. Nov. 16, 2015). The Board’s conclusion was based, in part, on its decision to accord no weight to an aspect of declaration testimony the Petitioner (Ariosa) offered in support of its reply brief. The Federal... More
  • PTO Requests Congress Change AIA Proceedings As required by the Leahy-Smith America Invents Act, the PTO issued a report to Congress in September  summarizing implementation of the AIA  in the four years since the Act went into effect. The report  proposes recommended changes to the law that the PTO would like to see enacted. A full copy of the report is available here. The most substantive issue addressed in these recommendations, in my view, relates to CBM proceedings. Under the originally enacted legislation, the CBM proceeding was... More