PTABWatch Blog

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

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

  • 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 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, Inc., Appeal No. 2015-1177 (Fed. Cir. May 25, 2016), the Federal Circuit affirmed the PTAB’s denial of patentee Aqua’s motion... More
  • District Court Interprets IPR Estoppel Provision to Permit Reliance on Cumulative Prior Art Not Reasonably Available in IPR Proceeding 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
  • Dissent: “Deferential review by the Federal Circuit falls short of the legislative purpose of providing optimum determination of patent validity.” In Merck & CIE v. Gnosis S.P.A., Gnosis Bioresearch S.A., Gnosis U.S.A. Inc., Case No. 2014-1779 (Fed. Cir. Dec. 17, 2015), the Federal Circuit affirmed the Board’s decision that the contested claims were invalid for obviousness, determining that the Board’s factual findings were supported by substantial evidence, and agreeing with the Board’s conclusion of obviousness.  However, in dissent, Judge Newman asserted that the Federal Circuit’s substantial evidence standard of review for the Board’s factual findings in AIA trial decisions is... More
  • Secondary Considerations Finally Found to be Persuasive In what appears to be only the second instance¹ to date, evidence of secondary considerations helped a Patent Owner defend against a Petitioner’s obviousness challenge during an IPR proceeding.  In Phigenix, Inc. v. Immunogen, Inc., the Board issued its final written decision and held that each of the eight challenged claims were not unpatentable, finding the Patent Owner “advances persuasive evidence” regarding the prior failure of others and the long-felt need in the industry. Phigenix, Inc. v. Immunogen, Inc., IPR2014-00676, Paper... More
  • Petitioner Must Prove Reference Art Entitled to Filing Date of its Provisional Application. When an alleged prior-art patent in an IPR claims priority to a provisional application, and the challenged patent claims priority to an intervening date between the provisional filing date and the non-provisional filing date of the reference patent, the burden is on the Petitioner to prove that the prior-art patent is entitled to the filing date of its provisional application—by demonstrating that the claims of the reference patent are supported by the provisional application. In Dynamic Drinkware, LLC v. National Graphics, Inc.,... More
  • PTAB Grants Request for Rehearing on Decision to Institute In a rare event, the PTAB recently changed one of its decisions denying institution of inter partes review of a claim.  That change was prompted by the IPR-petitioner’s request for rehearing on the PTAB’s original institution decision in Apple Inc. et al. v. Memory Integrity, LLC, IPR2015-00163.  Decision on Institution (Paper 18, “Orig. Dec.”); Request for Rehearing (Paper 20, “Req. Reh’g”); Decision on Request for Rehearing (Paper 22, “Dec.”).  A search of Docket Navigator reveals that fewer than one in... More