PTABWatch Blog

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

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

  • Successful IPR Petition Time Barred Under 35 U.S.C. §315(b) by Involuntarily Dismissed Complaint In Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., Appeal Nos. 2017-1555, 217-1626 (Fed. Cir. Sept. 28, 2018), the Federal Circuit vacated the Patent Trial and Appeal Board’s final written decision in an IPR because institution of the IPR should have been time barred under 35 U.S.C. §315(b).  Additionally, the Federal Circuit declined to consider a challenge to a sanctions order by the Board because the amount of sanctions had not yet been quantified and thus the court lacked... More
  • Federal Circuit Reverses, i.e. Overturns, Board’s Anticipation Decision Due to Overbroad Claim Construction In TF3 Ltd. v. Tre Milano, LLC, Appeal 2016-2285 (Fed. Cir. July 13, 2018), the Federal Circuit reversed the Patent Trial and Appeal Board’s final written decision canceling claims directed to a hair styling device as anticipated by prior art.  The court concluded that the Board improperly broadened two claim terms beyond the description in the patent specification.  Using the correct claim construction, the court concluded that prior art does not anticipate the claims.  In part, the court relied upon... More
  • Federal Circuit Remands Decision on Motion to Amend to Board to Apply and Interpret Aqua Products and SAS Institute The Federal Circuit’s recent decision in Sirona Dental Systems GMBH v. Institut Straumann AG, Appeals 2017-1341, 2017-1403 (Fed. Cir. June 19, 2018) tasked the PTAB with reconciling the Supreme Court’s SAS Institute decision (discussed here) with its en banc decision in Aqua Products regarding the burden of proof on motions to amend (discussed here). The patent at issue concerned a method for producing a drill template for placement of a tooth implant. One of the steps in the independent claim was directed... More
  • Motion to Amend Substituting Claims Granted in Full, Possibly Reflecting the Change Wrought By Aqua Products The Board recently granted a motion to amend, to replace unpatentable claims with proposed substitute claims, a rare occurrence that may signal a change compelled by Aqua Products (summarized here). In Apple, Inc. v. Realtime Data, LLC, Case No. IPR2016-01737 (PTAB March 13, 2018), the Board determined that all challenged claims were unpatentable and then granted the patent owner’s contingent motion to amend with respect to all proposed substitute claims.  Based on a USPTO study on motions to amend (see... More
  • Avoid Creating Bad Blood with the Board The Board recently denied a post grant review petition because the challenge was deemed redundant of the Patent Office’s earlier examination of similar claims in a related application. Live Nation Entertainment, Inc. v. Complete Entertainment Resources  B.V., Case No. PGR2017-00038 (PTAB January 16, 2018). The decision offers a cautionary tale for patent practitioners.  The Board learned of the earlier examination from the patent owner, not the petitioner who was obliged to advise the Board of “related matters.” The patent challenged in... More
  • Board Issues Guidance on Motions to Amend in View of Aqua Products The PTAB’s Chief Administrative Patent Judge issued a memorandum on November 21, 2017, providing guidance on motions to amend in view of the en banc decision of the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (discussed here and here).  The court in Aqua Products determined that the Board could not the place burden of persuasion with respect to the patentability of substitute claims on the patent owner.  The memorandum stated that the Board will... More
  • Board Decision Grants Motion to Amend With Respect to One Substitute Claim and Denies Motion to Amend With Respect to Other Substitute Claim The Board’s recent decision in Veeam Software Corp. v. Veritas Technologies, LLC, Case No. IPR2014-00090 (PTAB July 17, 2017), provides patent practitioners with a framework for analyzing proposed substitute claims.  The Board’s decision, granting patent owner’s motion to amend in part, should be considered in conjunction with the Federal Circuit’s decision in Veritas Technologies LLC v. Veeam Software Corp., 835 F.3d 1406 (Fed. Cir. 2016), which vacated the Board’s earlier disposition of the IPR and remanded the case to the... More
  • Rejection of Claims Containing Functional Language and a Negative Limitation Affirmed by Federal Circuit The Federal Circuit’s recent decision in In re Chudik, Appeal 2016-2673 (Fed. Cir. August 25, 2017) (non-prec.), offers patent practitioners a cautionary tale and good teaching points about the propriety of negative limitations and functional claim language.  No two situations are the same, of course, but the case offers a real-world example of how claims reciting these types of features may be assessed by the Patent Office and the Federal Circuit.  Dr. Chudik’s application concerns a humeral implant used in shoulder... More
  • Statement of Agreement or Disagreement with Attorney Argument Alone Does Not Provide Substantial Evidence To Support PTAB Findings In Google Inc. v. Intellectual Ventures II LLC, Appeal 2016-1543, 2016-1545 (Fed. Cir. July 10, 2017), the Federal Circuit affirmed the PTAB’s final written decision canceling some claims of U.S. Patent No. 6,121,960, but vacated the portion of the decision that refused to cancel other claims.  With respect to the upheld claims, the court remanded the matter because the PTAB failed to adequately explain its findings, noting that the PTAB’s “disagreement with [the petitioner] … does not amount to a... More
  • Different Invalidity Conclusions by PTAB and Federal Courts Prohibited in Inter Partes Reexamination But Permissible in IPR In Fairchild (Taiwan) Corp. v. Power Integrations, Inc., Appeal 2017-1002 (Fed. Cir. Apr. 21, 2017), the Federal Circuit determined that no inter partes reexamination proceeding can be brought or maintained on issues that a party raised or could have raised in a since-concluded civil action. Specifically, once the court issues a final judgment in the civil action that the party has not sustained its burden of proving the invalidity of the patent claim, the party may neither initiate nor maintain a... More