PTABWatch Blog

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

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

  • Federal Circuit to take AIA Time Bar issue En Banc As we had predicted in a previous post, the Federal Circuit, on January 4, 2017, granted patent owner Wi-Fi One LLC’s petitions for rehearing en banc regarding the interpretation of, and interplay between, 35 U.S.C. § 314(d) (the No Appeal provision) and § 315(b) (the Time Bar provision).  A few months ago, we wrote about the related decision Wi-Fi One, LLC v. Broadcom Corp., Appeal 2015-1944 (Fed. Cir. Sept. 16, 2016), which the court’s order vacates: In Wi­Fi, the patent owner... More
  • Federal Circuit Dismisses Appeal Based on AIA Time Bar, But Two Judges Call for En Banc Review An updated discussion of this issue is available here: Federal Circuit to Take AIA Time Bar Issue En Banc In Click-to-Call Techs. v. Oracle Corp., Appeal 15-1242 (Fed. Cir. Nov. 17, 2016) (non-prec.), on remand from the Supreme Court for further consideration in view of Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016) (as we discussed here), the Federal Circuit again dismissed the patent owner’s (Click-to-Call’s) appeal, concluding that the court lacks jurisdiction to review a decision by the... More
  • PTAB Upholds Claims Under Narrowed BRI Construction on Remand The PTAB’s recent decision on remand in Corning Optical Comm. v. PPC Broadband (IPR2013-00342, Paper No. 57), and the related decision on appeal (815 F.3d 747 (Fed. Cir. 2016)), serve as a reminder that the broadest reasonable interpretation (BRI) standard does not permit an unreasonably broad construction. In addition, the PTAB’s related order (see Paper 55), denying the parties’ requests for further briefing on remand, indicates that, when the Federal Circuit bases its claim construction on a party’s construction advanced during... More
  • PTAB’s Decision on Remand in Dell v. Acceleron Shows Strict treatment of Post-Petition Arguments The PTAB’s August 22, 2016, decision in IPR2013-00440 on remand from the Federal Circuit, Dell, Inc. v. Acceleron, LLC,¹ sheds light on how the PTAB may treat seemingly new or different arguments raised post-petition.  After Dell, and as discussed below, practitioners may expect the PTAB to exercise a greater degree of scrutiny when considering arguments that differ from those raised in the original petition, or that are otherwise not responsive to a patent owner’s positions raised in a response.  See 37... More