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

  • What Claim Construction Standard Applies If a Patent Expires During IPR Appeal? In Personal Web Technologies, LLC v. Apple, Inc., Case No. 2016-1174 (Fed. Cir. Feb. 14, 2017), the Federal Circuit upheld the PTAB’s construction of disputed claim terms, but did not resolve a dispute over whether the broadest-reasonable-interpretation standard (BRI) or Phillips standard should apply when the challenged patent expires shortly after the PTAB issues its final written decision. Despite the correct claim construction, the court vacated the decision and remanded the case to the PTAB for reconsideration of the merits... More
  • Federal Circuit Upholds Cancellation of Micrografx Patent Claims for Anticipation In recent non-precedential decisions, Micrografx, LLC v. Google Inc., Case No. 2015-2090 (Fed. Cir. Nov. 29, 2016) (Micrografx I) and Micrografx, LLC v. Google Inc. (Micrografx II), Case No. 2015-2091 (Fed. Cir. Nov. 29, 2016), the Federal Circuit upheld three IPR final written decisions canceling challenged claims of Micrografx patents for anticipation, and denying a motion to amend claims. The court determined that any errors in claim construction were harmless, and that substantial evidence supported the PTAB’s findings of anticipation. In... More
  • Federal Circuit Limits Scope of CBM Reviews In Unwired Planet, LLC v. Google Inc., the Federal Circuit vacated the PTAB’s final decision in a CBM review because the PTAB had applied an overly broad standard to determine that the challenged claims were directed to a “financial product or service” subject to CBM review, and remanded the case for evaluation under the proper standard. Google had filed a petition for CBM review of Unwired’s patent entitled “Method and System for Managing Location Information for Wireless Communications,” and in particular,... More
  • PTAB’s Reconsideration of Institution Decision Unreviewable on Appeal In denying a petition for rehearing, the Federal Circuit determined in Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc. that under Cuozzo, the court lacks authority to review a PTAB decision that reconsidered an IPR institution decision, and then terminated the IPR because the petition failed to identify the real party in interest. As we have previously discussed, the Supreme Court in Cuozzo determined that under 35 U.S.C. § 314(d), a PTAB decision on institution of an IPR is nonappealable, although such a... More
  • Petitioner Avoids One-Year Time Bar by Acquiring ANDAs after Filing IPR Petition A PTAB decision denying a patent owner’s motion for discovery concerning privity illustrates what may be a carefully-structured business transaction that permitted a petitioner to avoid the effect of the one-year time-bar for filing a petition under 35 U.S.C. § 315(b).  As we have previously discussed, generic drug company Teva Pharmaceuticals USA, Inc.’s IPR petitions challenging patents covering Suboxone ® Film were denied by the PTAB because they were filed minutes after expiration of the one-year time limit of 35 U.S.C.... More
  • PTAB Improperly Shifted Burden of Proof in IPR In In Re Magnum Oil Tools International Ltd., the Federal Circuit reversed the PTAB’s final decision cancelling challenged claims for obviousness because the record did not include substantial evidence of a motivation to combine references, and because the PTAB improperly shifted the burden of proof on this issue to the patent owner. Petitioner McClinton Energy Group filed an IPR petition challenging claims of a patent relating to technology for “fracking” (oil drilling using hydraulic fracturing). In fracking, a wellbore is drilled... More
  • Supreme Court Upholds Use of BRI Standard in Cuozzo In Cuozzo Speed Technologies, Inc., v. Lee, the Supreme Court affirmed the Federal Circuit’s decision, upholding the PTAB’s use of the BRI standard for claim interpretation in IPRs, and determining that 35 U.S.C. § 314(d) bars judicial review of the PTAB’s decision to institute review on grounds not specifically raised in the IPR petition. Broadest Reasonable Interpretation In an opinion authored by Justice Breyer, the Court determined that the USPTO’s rule requiring application of the BRI standard for claim interpretation in IPRs,... More
  • New Rules Permit Testimony in Support of Preliminary Response Revised rules for PTAB trials, which were published for comment in August 2015, have now been finalized and will be effective for all petitions filed on or after May 2, 2016. As we previously reported, the new rules clarify procedures for addressing when the PTAB will apply a Phillips-type claim construction for patents that may expire before a final written decision is issued; substitute word count limits for briefs instead of page limits; incorporate a Rule 11-like certification for papers submitted... More
  • PTAB Cannot Cancel Claim Based on New Argument Raised at Final Hearing In Dell, Inc. v. Acceleron, LLC, Case No. 2015-1513, -1514 (Fed. Cir. 2016), the Federal Circuit vacated in part the PTAB’s final written decision in IPR2013-00440, on the basis that the PTAB improperly canceled a claim based on a factual assertion first raised by the petitioner at final hearing, too late for the patent owner to meaningfully respond. Acceleron’s U.S. Patent No. 6,948,021 relates to a computer-network appliance containing hardware modules that can be removed and replaced while the appliance remains... More
  • Petitioner Blows Smoke with Late-Filed Declaration In Redline Detection, LLC v Star Envirotech, Inc., the Federal Circuit affirmed a PTAB final written decision that the petitioner failed to show that the challenged claims were obvious, and upholding the PTAB’s decision denying the petitioner’s motion to submit an expert declaration as supplemental evidence, after the PTAB instituted the IPR. The petitioner Redline Detection filed an IPR petition challenging two claims of Star Envirotech’s patent, on twelve different grounds. The patent is directed to methods of generating smoke, such... More