Ryan J. Schermerhorn, Partner

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

• Federal Circuit to Decide Whether KSR Applies to Design Patents On June 30th, the Federal Circuit granted a petition for re-hearing en banc in LKQ Corp. v. GM Global Tech. Operations LLC.[1] LKQ, an auto parts repair vendor for GM, successfully petitioned for inter partes review of GM’s design patent for a front fender design,[2] arguing it was anticipated by a prior art reference (Lain) and obvious over Lian alone or in combination with a brochure for the 2010 Hyundai Tucson. The PTAB ultimately affirmed the patentability of GM’s claimed... More
• PTAB Plays Wrong Tune On Whether Reference is Analogous Art In Donner Technology, LLC v. Pro Stage Gear, LLC, Appeal. No. 20-1104 (Fed. Cir. Nov. 9, 2020), the Federal Circuit vacated and remanded the PTAB’s decision that the Petitioner, Donner Technology, did not sufficiently prove unpatentability because a printed publication on which it relied was not sufficiently analogous to the claimed subject matter.  In doing so, the Federal Circuit reminded the PTAB, and practitioners alike, of the proper standard for determining whether a reference is “analogous,” as well as how... More
• Raiders of the Lost Art In Telefonaktiebolaget LM Ericsson, (“Ericsson”), v TCL Corporation, (“TCL”), 2017-2381, -2385 (Fed. Cir. Nov. 7, 2019), the Federal Circuit affirmed the PTAB’s decision that canceled claims in an Ericsson patent that TCL challenged based on its subsidiary finding that a German journal article TCL presented was indeed prior art.  The decision is important because it offers guidance in assessing what type of evidence may be persuasive in a PTAB’s assessment of the public accessibility of a journal article whose publication... More
• PTAB Failed to Apply Standard of Diligence Properly In ATI Technologies v. Iancu, 920 F.3d 1362 (Fed. Cir. 2019), the Federal Circuit reversed the PTAB’s decision that the Patent Owner had not presented sufficient evidence to swear behind several prior art references.  In doing so, the Federal Circuit reminded the PTAB, as well as practitioners alike, of the proper standard of proof for demonstrating the diligent reduction to practice of an earlier purported conception. LG Electronics filed three IPR petitions against several ATI patents directed to unified graphics processing... More
• PTAB Judges Weigh in on Best Practices for Ex parte Appeals The PTAB Bar Association’s Annual Conference in March included a panel of Administrative Patent Judges who offered commentary on best practices in ex parte appeals from original examination and reexaminations. The participating APJs were Lead Administrative Patent Judge Rae Lynn Guest and Administrative Patent Judge James T. Moore. The panel began by discussing statistics on ex parte appeals, which the Patent Office published in January 2019 (and available here), noting that the PTAB has significantly reduced its backlog of pending appeals,... More
• PTAB Failed to Properly Apply Incorporation by Reference Doctrine In Paice LLC, The Abell Foundation, Inc., v. Ford Motor Company, Appeal No. 2017-1406 (Fed. Cir. Feb. 1, 2018), the Federal Circuit reversed a PTAB decision for failing to properly apply the doctrine of incorporation by reference, thereby reminding the PTAB as well as practitioners alike of the proper standard for invoking and applying that doctrine. Paice owns several patents directed to a torque-based algorithm for choosing operating modes in a hybrid vehicle, including U.S. Patent No. 7,237,634 (“the ‘634 Patent”)... More
• Federal Circuit Again Reminds PTAB that BRI Must Be Reasonable Last fall, the Federal Circuit reversed a PTAB decision that affirmed an Examiner’s rejection of various claims in an ex parte reexamination because the Examiner’s interpretation of the claims, which the PTAB upheld, was unreasonably broad. In re Smith International, Inc., Appeal No. 2016-2303 (Fed. Cir. Sept. 26, 2017). The court’s decision is noteworthy because it reinforces the bounds of the broadest reasonable interpretation claim construction standard the Patent Office must apply when assessing patentability, bounds that do not encompass... More
• Federal Circuit Signals that PTAB Correctly Construed Most Signal Terms but Misconstrued one Other In Wasica Finance GmbH v. Continental Automotive Sys., Inc., (Fed. Cir. Apr. 4, 2017), the Federal Circuit affirmed-in-part and reversed-in-part two PTAB final written decisions cancelling some but not all challenged claims  of U.S. Patent No. 5,602,524 (“the ‘524 patent”). The PTAB and court decisions are interesting because together they highlight the consequence of not supporting seemingly strong arguments with expert witness testimony. Further, the decisions highlight the consequence of not explaining how facts implicate esoteric nuances in the patent... More
• Joinder Does Not Prevent Application of IPR Estoppel Provision A little more than a month after the Delaware district court narrowly interpreted the IPR estoppel provision to suggest that it may not be necessary to include all known grounds so as to avoid estoppel in district court litigation, the same court issued a decision suggesting that the IPR estoppel provision may not be so narrow after all.  The decision adds to the growing confusion over the scope of the estoppel provision Congress wrote into the AIA. On December 20, 2013,... More
• Federal Circuit to PTAB (Once Again) – Explain Yourself!!! The Federal Circuit has once again vacated and remanded a PTAB decision on the basis that the PTAB did not adequately explain its reasons for finding a claimed invention obvious, but this time in the context of an appeal decision affirming an examiner’s rejection of pending claims. In In re: Marcel Van Os et al., Appeal No. 2015-1975 (Fed. Cir. Jan. 3, 2017), the Federal Circuit vacated and remanded the PTAB’s affirmance, on appeal, of the examiner’s rejection of claims 38-41... More