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

  • 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
  • Federal Circuit Reverses PTAB Decision Based on Incorrect Construction of “Is” In the first full reversal of a PTAB IPR decision, the Federal Circuit reversed the PTAB’s ruling in Straight Path IP Group, Inc. v. Sipnet EU S.R.O, on the basis that the PTAB incorrectly construed the claim term “is,” in claims directed to a computer program for online communications.  In a 2-1 decision authored by Judge Taranto, the court determined that the claim language “is connected to a computer network,” should be construed to require connection to the network at the... More
  • APJs Dispute Requirements for a Reference to Qualify as a Printed Publication Final written decisions, IPR2014-00781, IPR2014-01086, IPR2014-00821, IPR2004-00580, IPR2014-00802, for IPRs of several patents owned by Zond, LLC, which include rare dissenting opinions, illustrate different views of APJs concerning the requirements for establishing that a reference is a printed publication under 35 U.S.C. § 102(b). These decisions provide helpful guidance on how to address references whose status as a printed publication may be in dispute. Zond, LLC patents have been frequently targeted in IPR petitions, with 125 petitions filed, including challenges to... More
  • Dissent in SAP v. Versata: Federal Circuit Lacks Authority to Review Whether Challenged Patent is Subject to CBM Proceedings As reported earlier, the Federal Circuit recently affirmed the PTAB’s final written decision in SAP v. Versata, No. 2014-1194 (Fed. Cir. 2015), its first final written decision in a CBM review. As part of that decision, the Court determined that it had jurisdiction to determine whether the patent at issue was a “covered business method patent” within scope of the PTAB’s authority for a CBM review under Section 18 of the American Invents Act (“AIA”), and that such review by... More
  • PTAB Denies Petitioner’s Request to Terminate IPR Two Months After Institution Decision The PTAB denied a Petitioner’s request for authorization to file a motion to terminate an IPR without a final written decision, made only two months after the Board issued a decision instituting the IPR. Masterimage 3D, Inc. v. Reald Inc., Case IPR2015-00035, Paper No. 30 (June 25, 2015). After institution of an IPR but before the Patent Owner had filed a response, the Petitioner Masterimage 3D, Inc. sought permission to request adverse judgment and termination of the IPR, to avoid the... More