PTABWatch Blog

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

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

  • Two More District Courts Apply IPR Estoppel to Grounds Not Raised In Petition As previously discussed in our post covering the state of IPR estoppel, initial district court decisions have varied regarding the scope of IPR estoppel applied to ground for invalidity not raised in a petition, but that could have been raised. Two recent decisions may show a trend toward uniformity. In Cobalt Boats, LLC v. Sea Ray Boars, Inc., Judge Morgan of the Eastern District of Virginia ruled on motions in limine, including a motion regarding the scope of IPR estoppel. Case... More
  • Look to the Claims for Estoppel In three recent decisions, the Federal Circuit reiterated the importance of determining estoppel in PTAB proceedings on a claim-by-claim basis. In the earlier related decisions, In re Affinity Labs of Texas, LLC [1] , 856 F.3d 883 (Fed. Cir. 2017) and In re Affinity Labs of Texas, LLC [2], 856 F.3d 902 (Fed. Cir. 2017), the court addressed the effects of a district court judgment and settlement of a district court litigation on pending pre-AIA reexamination proceedings. Affinity Labs of Texas filed... More
  • AIA Estoppel – 7 Things We Know So Far When the America Invents Act was enacted, one of the biggest questions facing petitioners was the scope of the estoppel set forth in 35 U.S.C. § 315(e). While IPR was expected to provide a cheaper, more efficient method of challenging the validity of a patent, what would the challenger be giving up? The statute provides that for any patent claim addressed in a final written IPR decision the petitioner (or real party in interest), may not request, maintain, or assert that... More
  • PTAB Bar Association Conference Kicks Off with Keynote Address The PTAB Bar Association held its first conference in Washington DC March 1-3, 2017 with more than 400 attendees and a wait list of interested individuals. PTAB Chief Judge David Ruschke gave the keynote address. Chief Judge Ruschke began by acknowledging why we are now at a point where there is an interest in having a PTAB Bar Association. Specifically, he noted that the PTAB has become a vital component of the patent system. We have seen that reflected in an... More
  • Intuitive to Use Versus Use of an Element for its Intended Purpose – Is There a Difference? Is there a difference between saying that it would be intuitive to use the features of one prior art reference in combination with another, versus saying that such a combination merely uses a prior art element for its established function? According to two recent decisions, the Federal Circuit apparently thinks so. In In re: Van Os, Case No. 2015-1975 (January 3, 2017), the Court reversed and remanded the Board’s finding of obviousness, rejecting the Board’s conclusion that the combination of prior... More
  • To Antedate, Must an Inventor Prove “Continuous Reasonable Diligence” or “Reasonably Continuous Diligence”? A split panel of the Federal Circuit held that the PTAB applied a standard that was too exacting when it required an inventor to prove the “continuous exercise of reasonable diligence” to antedate a prior art reference. Rather, the PTAB should have applied the rule of reason to determine if the inventor proved that there was “reasonably continuous diligence.” Perfect Surgical Techniques v. Olympus America, Inc., Case No. 2015-2043, __ F.3d __ (Fed. Cir. Nov. 15, 2016). This clarified standard... More
  • 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 chipsnetwork.org. 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