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

  • Federal Circuit Declares Unreviewable PTAB’s Refusal to Apply Assignor Estoppel The Federal Circuit continues to declare aspects of the PTAB’s work to be beyond its review.  Most recently, in Husky Injection Molding Systems Ltd., v. Athena Automation Ltd., Case Nos. 2015-1726, 2015-1727 (Fed. Cir. Sept. 23, 2016), the Federal Circuit, in a 2-1 decision, concluded that it lacked authority to question the PTAB’s refusal to extend the equitable doctrine of assignor estoppel to PTAB proceedings. We previously reported on the Federal Circuit’s opinion regarding the merits of the PTAB’s Final Decision... More
  • PTAB Extends a Helping Hand to Petitioner: Advising Petitioner to File Supplemental Evidence Rather Than Supplemental Information In a bit of “inside baseball,” the PTAB recently clarified the difference between supplemental evidence and supplemental information.  Practitioners would do well to give careful attention to this distinction.  The difference can have profound consequences to an IPR Petitioner. In Generico LLC v. Dr. Falk Pharma GmbH, IPR2016-00297, Paper No. 15 (July 15, 2016), the PTAB entered an order regarding the conduct of proceedings.  The order addressed the Petitioner’s request to file a motion to supplement information pursuant to 37 C.F.R.... More
  • PTAB Finds Motivation to Combine References, but Cancellation Comes Too Late for More than 200 Defendants On July 6, 2016, the PTAB cancelled claims in a patent which had bedeviled more than 250 named defendants in litigation dating back to 2008.  The list of defendants reads like a Who’s Who of financial and commercial businesses, including the nation’s most prominent banks, credit card companies, online stock traders, e-Commerce retailers, cable and telecommunications companies, airlines, and even all twelve of the nation’s Federal Reserve banks.  Any plans the patent owner had to continue its siege of these... More
  • Groundhog Day . . . Again: Observations on the Oral Argument in Cuozzo Speed Technologies, LLC v. Lee The much anticipated argument in Cuozzo Speed Technologies, LLC v. Lee occurred Monday, April 25, 2016 before the United States Supreme Court.  One can glean some insight from the Justices’ questions and remarks, but the ultimate outcome in this seminal decision remains uncertain.  The following reflects the tenor of the remarks of seven of the Justices’ who spoke during oral argument.  In keeping with his much reported practice at these arguments, Justice Thomas remained mute.  The following discussion focuses exclusively... More
  • The PTAB Vaccine: Institution of IPR Protects Against Willfulness Claim On April 8, 2016, the U.S. District Court for the District of Colorado overturned a jury’s finding that defendant’s infringement was willful, relying in part on the fact that the PTAB had elected to institute inter partes review of one of the asserted patents. We have previously reported on a number of District Court decisions that have addressed whether, and in what circumstances, the denial of an IPR petition may serve as evidence.  The Colorado court’s decision appears to be... More
  • Called Third Strike, Is the PTO Director Out? Federal Circuit Again Rejects Intervenor’s Argument that it Lacks Jurisdiction to Review Qualifications for CBM Review The Federal Circuit has rejected for the third time efforts by the Director of the PTO to preclude appellate review of whether challenged patent claims were properly deemed “covered business methods,” and thereby subject to CBM review.  Previously, in Versata Development Group, Inc. v. SAP America, Inc., the Federal Circuit concluded that its jurisdiction to hear appeals of the PTAB’s final written decisions empowered it to examine if challenged claims qualified for CBM review (we reported here).  In doing so,... More
  • Supreme Court to Kill Golden Goose? Court Announces It Will Review Use of Broadest Reasonable Construction in IPR Proceedings On January 15, 2016, the United States Supreme Court agreed to consider whether it is appropriate to give claims challenged in inter partes  review their “broadest reasonable construction.”  See Cuozzo Speed Tech., LLC v. Lee.  Given the Federal Circuit’s dismal recent track record when the Supreme Court has injected itself into disputed patent issues, practitioners are likely girding for a tectonic shift in IPR proceedings.  For those beleaguered by litigation from non-practicing entities, they may be justified in fearing that... More
  • PTAB to Shakespeare: “ ‘What’s in a Name?’ Are you Kidding? Everything!” Shakespeare’s Juliet famously observes, “What’s in a name? That which we call a rose by any other name would smell as sweet.”  The PTAB begs to differ. While a generic computing device may not render abstract claims patentable, introduce it with a fancy nom de guerre and you have got yourself patentable subject matter. In Hulu, LLC v. iMTX Strategic, LLC (CBM2015-00147), the PTAB rejected arguments that a claim to a system and method for sending encrypted media files upon request... More
  • How I Learned to Stop Worrying and Love the Bomb: Response to IPO Panel on PTAB Proceedings Recently, in the pages of this blog, we reported on the dire predictions made at the IPO Annual Meeting here in Chicago of the “end of days” for patents.  The purported culprits?  The PTAB and the America Invents Act’s newly enacted Inter Partes Review and Covered Business Method Review.  “Well, allow me to retort,” to borrow a line from Samuel L. Jackson’s character in Pulp Fiction. Former Chief Judge of the PTAB, James Smith, had it exactly right when he sought... More
  • Suppliers Can Lack Standing to Seek CBM Review on Behalf of Customers In several recent decisions, the PTAB has clarified the standing required to file petitions seeking Covered Business Method review.  Under the AIA, standing to seek Covered Business Method review is limited to those charged with infringement and their “privies.”  “Privies,” however, do not encompass merely any party with whom the petitioner is in “privity.”  “Privies” is effectively synonymous with “customers”– and, not merely any customers, but customers who the petitioner is legally obligated to indemnify for their alleged infringement.  Earlier this... More