PTABWatch Blog

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

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

  • Corroboration Required to Prove Earlier Invention Date As we have discussed (here and here), owners of pre-AIA patents may be able to “swear behind” alleged prior art references by providing evidence of an earlier invention date, but the inventors’ testimony concerning conception of the invention must be corroborated by independent evidence. In Kolcraft Enterprises, Inc. v. Graco Children’s Products, Inc., No. 2018-1259 (Fed. Cir. Jul. 2, 2019), the patent owner was unable to swear behind alleged prior art because it did not provide sufficient corroborating evidence. The patent... More
  • Estoppel May Not Apply When Petitioner Lacks Standing to Appeal IPR Decision In AVX Corp. v. Presidio Components, Inc., No. 2018-1106 (Fed. Cir. May. 13, 2019), the Federal Circuit determined that a manufacturer did not have standing to appeal an adverse decision in an IPR challenging a competitor’s patent, because the petitioner did not have a present or nonspeculative interest in engaging in conduct arguably covered by the patent. The decision leaves open the question of whether a petitioner that lacks standing to appeal would be bound by petitioner estoppel under 35... More
  • Petitioner Has Burden of Persuasion on Real Party in Interest Under 35 U.S.C. § 312(a), an IPR petition must identify “all real parties in interest,” and, an IPR petition is time-barred under 35 U.S.C. § 315(b) if “filed more than 1 year after the date on which the petitioner, the real party in interest, or a privy of the petitioner is served with a complaint alleging infringement of the patent.” As we have discussed, PTAB decisions on whether § 315(b) has been satisfied are reviewable on appeal. In Worlds Inc. v. Bungie, Inc.... More
  • Chemical Company Developing Industrial Process Had Standing to Appeal In E.I du Pont de Nemours & Co. v. Synvina C.V., No. 2017-1977 (Fed. Cir. Sept. 17, 2018), the Federal Circuit determined that the IPR petitioner, DuPont, had Article III standing to appeal an IPR final decision, although it had not been accused of infringement of patent owner Synvina’s patent, or engaged in activity that could be accused of infringement. The court explained that a controversy of sufficient immediacy and reality existed because DuPont, an avowed competitor of the patent... More
  • Attorneys’ Fees Not Awardable Expenses in Section 145 Actions Update: On March 4, 2019, the Supreme Court granted the Government’s cert. petition to review the Federal Circuit’s judgment in NantKwest, Inc. v. Iancu, discussed in the post below. The Court’s docket for this case is 18-801. In NantKwest, Inc. v. Iancu, No. 2016-1794 (Fed. Cir. Jul. 27, 2018) (en banc), the Federal Circuit decided en banc that attorneys’ fees are not “expenses” required to be paid by an applicant who appeals an ex parte prosecution case to the Eastern District of... More
  • CBM Case Remanded to Determine if Claims are CBM Eligible under Unwired Planet In Unwired Planet, LLC v. Google Inc., 841 F.3d 1346 (Fed. Cir. 2016) (discussed here), the Federal Circuit determined that the PTAB was using an overly-broad standard for CBM eligibility. Specifically, the PTAB was administering CBM review of patents if they included claims directed to activities that are “incidental to” or “complementary to” a financial activity. The court determined the PTAB’s standard was too broad and that only patents with claims directed to a financial product or service are eligible for... More
  • Inventor’s Uncorroborated Testimony Not Sufficient to Swear Behind Reference Attempting to “swear behind” an alleged prior art reference has been common practice in IPRs, going back to the first IPR, Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC, IPR2012-00001 (PTAB 2013), aff’d sub nom. In re Cuozzo Speed Tech., LLC, 793 F.3d 1268 (Fed. Cir. 2015), aff’d sub nom., Cuozzo Speed Tech., LLC v. Lee, 136 S. Ct. 2131 (2016). In that case, Cuozzo was unsuccessful in swearing behind (for failure to exercise reasonable diligence toward reduction to practice),... More
  • Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims On April 24, 2018, the Supreme Court issued its decision in SAS Institute, Inc. v. Iancu, holding that if the Patent Office institutes an 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. The Court reversed the Federal Circuit’s judgment, which upheld the Patent Trial and Appeal Board’s (PTAB) common practice of instituting review on some, but not all challenged claims, and then issuing... More
  • Is the PTAB Bound by a Prior Federal Circuit Claim Construction? In Knowles Electronics LLC v. Cirrus Logic, Inc., No. 2016-2010 (Fed. Cir. Mar. 1, 2018), the Federal Circuit affirmed a PTAB decision that upheld an examiner’s rejection of claims for anticipation in an inter partes reexamination (IPX). The same claims had earlier been challenged, and determined to be not invalid (over different prior art), in an ITC decision that was also affirmed by the Federal Circuit. MEMS Tech. Berhad v. Int’l Trade Comm’n, 447 F. App’x 142 (Fed. Cir. 2011).... More
  • Patent Owner Estoppel May Apply When Patent Owner Cancels Claims Before IPR Institution In Arthrex, Inc. v. Smith & Nephew, Inc., No. 2017-1239 (Fed. Cir. Jan. 24, 2018), the Federal Circuit affirmed the PTAB’s entry of adverse judgment against Patent Owner Arthrex, before instituting inter partes review. Specifically, the PTAB entered judgment after Arthrex had disclaimed all challenged claims, but before the PTAB decided whether to institute a trial. As a result of the PTAB’s adverse judgment, the Patent Owner is estopped, under 37 C.F.R. § 42.73(d)(3)(1), from obtaining another claim in a... More