PTABWatch Blog

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

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 Reverses PTAB’s Anticipation Decision: Proof of Prior Conception Improperly Excluded as Hearsay The Federal Circuit reversed, in part, a PTAB final written decision after determining that several emails, wrongly excluded as hearsay, showed the inventor’s conception prior to allegedly anticipating art.  In REG Synthetic Fuels, LLC v. Neste Oil Oyj,  No. 2015-1773 (Fed. Cir. Nov. 18, 2016), the Federal Circuit reversed the PTAB’s finding that a prior art reference anticipated the challenged claims directed to a certain paraffin composition.  The Federal Circuit determined that emails the PTAB wrongly excluded from evidence sufficiently... More
  • 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
  • Federal Circuit Suggest Expansive Interpretation of “Adapted toâ€� in Affirming CBM Cancellation In a recent non-precedential decision, the Federal Circuit suggested a very expansive interpretation for the oft-used phrase “adapted to.â€� Relying upon the prosecution history, the Federal Circuit determined that the Board correctly construed claims relating to interactive video programming, and on that basis affirmed the Board’s decision that the claims were anticipated by a prior art reference. Intertainer, Inc. v. Hulu, LLC, No. 2015-2065 (Fed. Cir. Sept. 26, 2016) (non-precedential). In sum, the Board’s constructions correctly capture the positions that [Patent... More
  • PTAB Extends a Helping Hand to Petitioner: Advising Petitioner to File Supplemental Evidence Rather Than Supplemental Information In a bit of “inside baseball,â€� 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,â€� 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.â€�  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!â€� Shakespeare’s Juliet famously observes, “What’s in a name? That which we call a rose by any other name would smell as sweet.â€�  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