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

  • PTAB Correctly Construed “Said” and Canceled Claims—but Was the Patent CBM Eligible? In a CBM appeal, TransPerfect Global, Inc. v. Matal, No. 2016-1121 (Fed. Cir. July 12, 2017) (non-prec.), the Federal Circuit determined that the PTAB correctly construed the word “said” in the claim term “said hyperlink,” and determined that TransPerfect’s challenged claims were unpatentable for lack of written description. The court’s claim construction analysis is thorough and well supported, but the treatment of the challenged patent as CBM-eligible appears to be inconsistent with Federal Circuit precedent. TransPerfect’s challenged patent claims methods of... More
  • Uncorroborated Declaration Not Sufficient to Avoid § 102(e) Prior Art In EmeraChem Holdings, LLC v. Volkswagen Group of American, Inc. (Fed. Cir. June 15, 2017), the Federal Circuit determined that the Patent Owner’s uncorroborated declaration was insufficient to show that asserted prior art under pre-AIA 35 U.S.C. § 102(e) represented the work of the same inventive entity as the challenged claims, and with respect to certain claims the PTAB failed to provide sufficient notice and opportunity to respond. Accordingly, the court affirmed in part and vacated in part the PTAB’s decision... More
  • Owner of Hot-Work Steel Processing Patent Burned by Its Own IPR Evidence In Rovalma, S. A. Böhler-Edelstahl GmbH & Co., No. 2016-2233 (Fed. Cir. May 11, 2017), the Federal Circuit vacated the PTAB’s final written decision and remanded the case for the PTAB to provide a further explanation for its determination that the challenged claims were obvious. According to the court, the PTAB’s decision lacked sufficient detail necessary for the court to determine if the PTAB’s findings were supported by substantial evidence, or if the PTAB provided the Patent Owner proper notice... More
  • 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