Tiffany D. Gehrke, Partner and Chair, Trademarks and Copyrights

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

• Designating Specific Storage Location for Ad Data Not Enough for Patentability In Customedia Techs. v. Dish Network Corp., No. 18-2239, the Federal Circuit affirmed a pair of PTAB judgments in CBM reviews canceling claims directed to the use of “a computer to deliver targeted advertising to a user” as ineligible under 35 U.S.C. § 101. More specifically, the claims recite reserving memory for advertising data in a data management system audio-visual processor recorder, like a set-top cable box. The court said that these claims recite nothing more than “an improvement to... More
• Federal Circuit Nixes PTAB’s Same-party and New Issue Joinder Precedent The Federal Circuit overturned PTAB precedent that broadly allowed joinder under 35 U.S.C. § 315(c), holding that (1) a party cannot be “joined as a party” to a proceeding if it is already a party to that proceeding, and (2) the statute does not authorize joinder of new issues. Background In Facebook, Inc. v. Windy City Innovations, LLC, No. 2018-1400 (Fed. Cir. Mar. 18, 2020), the Federal Circuit overturned the PTAB’s decision that joined together four IPRs filed within the 35... More
• Collateral Estoppel Not Limited to Identical Claims The equitable doctrine of collateral estoppel protects a party from having to re-litigate an issue that has already been fully and fairly adjudicated. In Nestlé USA, Inc. v. Steuben Foods, Inc. the Federal Circuit said that application of collateral estoppel is not limited to construing only identical patent claims; but instead, it extends to terms across related patents. Case No. 2017-1193 (Fed. Cir. Mar. 13, 2018). Nestlé and Steuben Foods were simultaneously involved in multiple litigation disputes. Two of these disputes... More
• CBM Eligibility: Patent Must Have a Claim that Contains, However Phrased, a Financial Activity Element Update: The Federal Circuit’s decision in this case was vacated as moot, on the basis that the challenged claims had been canceled in a separate IPR proceeding. PNC Bank Nat’l Assoc. v. Secure Axcess, LLC, 138 S. Ct. 1982 (2018). A patent that is merely incidental to a financial activity is not sufficient to render that patent eligible for CBM review.  Secure Access, LLC v. PNC Bank National Association et. al, Case No. 2016-1353 (Fed. Cir. Feb. 21, 2017).  In Secure Access,... More
• APA Requires Notice of and Opportunity to Respond to Grounds for Cancellation Notice of grounds for unpatentability in one proceeding does not provide notice in a second, related proceeding, even where the proceedings relate to the same patent, are between the same two parties, and include the same prior art reference. The Federal Circuit, in In re: NuVasive, Inc., Case Nos. 2015-1672 and 2015-1673 (Fed. Cir. Nov. 9, 2016), relied on the Administrative Procedure Act (“APA”) and determined that the PTAB had violated the patent owner’s right to an opportunity to respond... More
• Federal Circuit Confirms Prevailing Party Cannot Appeal to Correct PTAB’s Claim Construction The prevailing party in a PTAB proceeding cannot appeal the claim construction used. In SkyHawke Tech. LLC v. Deca Int’l Corp., Appeal Nos. 2016-1325 and 2016-1326, Patent Owner SkyHawke prevailed in an inter partes reexamination filed by Deca challenging claims of SkyHawke’s U.S. Patent No. 7,118,498.  Unsatisfied with the PTAB’s claim construction used in reaching that decision, SkyHawke appealed to the Federal Circuit requesting “[c]orrection of the PTAB’s claim construction and affirmance of the ultimate decision.”  (p. 2). SkyHawke argued that... More
• PTAB Concludes Database Patent Claims Are Ineligible under Section 101 Despite Enfish Notwithstanding the Federal Circuit’s Enfish warning that “we do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract,” in Informatica Corp. v. Protegrity Corp., the PTAB cancelled claims 1-8 and 18-53 of U.S. Patent No. 6,321,201 under Section 101 because the claims relating to a data security system for databases were directed at an abstract idea and recite ineligible subject matter.  Informatica Corp. v. Protegrity Corp., CBM2015-00021, Paper 38, (“Dec”) (PTAB May 31, 2016);... More
• Board Need Not Consider Arguments Beyond Those Actually Raised By Patentee In Motion To Amend An updated discussion of this issue is available here: Who Must Bear the Burden of Proof Regarding Patentability of Amended Claims? The Federal Circuit confirmed in a precedential opinion that the burden to prove patentability of an amended claim in an IPR proceeding rests squarely with the patentee, and in deciding a motion to amend claims, the Board only need consider the arguments presented by the patentee, not perform a full reexamination of the proposed claims. In In re Aqua Products,... More
• District Court Interprets IPR Estoppel Provision to Permit Reliance In what appears to be the first district court case to address the issue directly, Judge Lefkow of the United States District Court for the Northern District of Illinois held that 35 U.S.C. § 315(e)(2) estoppel does not preclude parties from raising grounds in a civil litigation that were cumulative of grounds that could have been asserted during that party’s prior IPR proceeding, so long as the grounds are based on prior art that was not reasonably available during the... More
• Federal Circuit Confirms Board Can “Pick and Choose” Among Claims in Its Decision to Institute IPR In Synopsys, Inc. v. Mentor Graphics Corporation, Appeal Nos. 2014-1516, 2015-1530 (Fed. Cir. Feb. 10, 2016), the Federal Circuit affirmed the PTAB’s judgment that two of the challenged claims were not invalid as anticipated.  The court also held that (1) the final order of the Board need not address every claim raised in the petition for review, and (2) the Board did not err in denying Mentor’s motion to amend. This post focuses on the court’s holding that the Board... More