PTABWatch Blog

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

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

  • IPR and Estoppel after SAS Institute The Supreme Court held on April 24, 2018 that if the Patent Office institutes and inter partes review (IPR) proceeding, it must issue a final written decision with respect to the patentability of every patent claim challenged by the petitioner. SAS Institute, Inc. v. Iancu, (discussed in greater detail here). Within days, the Patent Office issued Guidance on the impact of SAS on AIA Trial Proceedings explaining the procedures it intends to implement in view of the Court’s decision. The... More
  • The Supreme Court Finds IPR Proceedings Constitutional Inter partes review (IPR) is a procedure that allows a party to challenge the validity of an issued patent based on prior art patents or printed publications. IPRs first became available in 2013 following passage of the Leahy-Smith America Invents Act. Some have questioned whether this post-grant review of patent validity is constitutional. Today, the United States Supreme Court declared that neither Article III of the Constitution nor the Seventh Amendment right to trial by jury precluded such reviews by... More
  • PTAB Cases You Should Know The Federal Circuit, Supreme Court, and PTAB have been addressing a number of big issues in 2017 and 2018. Here are the cases you should know.   Recent Decisions Appeal of PTAB Institution Decisions After years of decisions applying a hardline rule that the PTAB’s decision whether or not to institute an IPR was not subject to appeal, the Federal Circuit held en banc, that the issue of whether a petitioner is time-barred from filing an IPR petition under 35 U.S.C. § 315(b) –... More
  • PTAB says 58% of Patents Survive Post-grant Proceedings Unchanged On October 24, 2017, the PTAB held its inaugural “Chat with the Chief” webinar. The main topic of the webinar was to discuss multiple petitions filed against the same patent. The PTAB sought to address concerns that have been raised by patent owners that challengers just keep filing petitions until something sticks, and that petitioners presenting multiple petitions unfairly gain an advantage by obtaining information from the Patent Owner’s response to the first petition or the Board’s Institution Decision that... More
  • Two More District Courts Apply IPR Estoppel to Grounds Not Raised In Petition As previously discussed in our post covering the state of IPR estoppel, initial district court decisions have varied regarding the scope of IPR estoppel applied to ground for invalidity not raised in a petition, but that could have been raised. Two recent decisions may show a trend toward uniformity. In Cobalt Boats, LLC v. Sea Ray Boars, Inc., Judge Morgan of the Eastern District of Virginia ruled on motions in limine, including a motion regarding the scope of IPR estoppel. Case... More
  • Look to the Claims for Estoppel In three recent decisions, the Federal Circuit reiterated the importance of determining estoppel in PTAB proceedings on a claim-by-claim basis. In the earlier related decisions, In re Affinity Labs of Texas, LLC [1] , 856 F.3d 883 (Fed. Cir. 2017) and In re Affinity Labs of Texas, LLC [2], 856 F.3d 902 (Fed. Cir. 2017), the court addressed the effects of a district court judgment and settlement of a district court litigation on pending pre-AIA reexamination proceedings. Affinity Labs of Texas filed... More
  • AIA Estoppel – 7 Things We Know So Far When the America Invents Act was enacted, one of the biggest questions facing petitioners was the scope of the estoppel set forth in 35 U.S.C. § 315(e). While IPR was expected to provide a cheaper, more efficient method of challenging the validity of a patent, what would the challenger be giving up? The statute provides that for any patent claim addressed in a final written IPR decision the petitioner (or real party in interest), may not request, maintain, or assert that... More
  • PTAB Bar Association Conference Kicks Off with Keynote Address The PTAB Bar Association held its first conference in Washington DC March 1-3, 2017 with more than 400 attendees and a wait list of interested individuals. PTAB Chief Judge David Ruschke gave the keynote address. Chief Judge Ruschke began by acknowledging why we are now at a point where there is an interest in having a PTAB Bar Association. Specifically, he noted that the PTAB has become a vital component of the patent system. We have seen that reflected in an... More
  • Intuitive to Use Versus Use of an Element for its Intended Purpose – Is There a Difference? Is there a difference between saying that it would be intuitive to use the features of one prior art reference in combination with another, versus saying that such a combination merely uses a prior art element for its established function? According to two recent decisions, the Federal Circuit apparently thinks so. In In re: Van Os, Case No. 2015-1975 (January 3, 2017), the Court reversed and remanded the Board’s finding of obviousness, rejecting the Board’s conclusion that the combination of prior... More
  • To Antedate, Must an Inventor Prove “Continuous Reasonable Diligence” or “Reasonably Continuous Diligence”? A split panel of the Federal Circuit held that the PTAB applied a standard that was too exacting when it required an inventor to prove the “continuous exercise of reasonable diligence” to antedate a prior art reference. Rather, the PTAB should have applied the rule of reason to determine if the inventor proved that there was “reasonably continuous diligence.” Perfect Surgical Techniques v. Olympus America, Inc., Case No. 2015-2043, __ F.3d __ (Fed. Cir. Nov. 15, 2016). This clarified standard... More