Sandip H. Patel, 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

• Patent Office Proposes Increasing AIA Trial Fees The Patent Office’s Director recently notified the Patent Public Advisory Committee (PPAC) of the Office’s intent to set or adjust several fees that patent applicants, patent owners, and those challenging patents in AIA trials must pay. For applicants, this includes fee increases for filing applications and tiered fees for filing terminal disclaimers. This also includes tiered fees for filing continuation applications more than three or seven years after the earliest claimed benefit application was filed. Part of those fees are... More
• Obvious Variants and the Hand of Fate Collateral estoppel is a resource-saving shortcut. Judges consider it when an issue previously received sufficient judicial attention. And they apply it when the issue was resolved against the party now seeking, in some way, to circumvent that resolution. In the absence of some intervening change in the law or new evidence, resolution likely would be the same as before. Addressing the issue anew would therefore be a waste of everyone’s resources. So, the judge bars that party from re-litigating the... More
• No Weight for Unsupported Expert Witness Testimony In early February 2023, the Patent Office’s Director designated as precedential the Patent Trial and Appeal Board’s decision in Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022). In this decision, the Board denied a petition seeking inter partes review. The petitioner asserted the challenged patent claims were obvious over printed publication prior art. One of the claimed features was not asserted to be disclosed in the published prior art, but rather asserted to be part of... More
• This Seems Absurd, but … Last year, a district court applied the doctrine of collateral estoppel to dismiss an infringement suit after the Patent Trial and Appeal Board decided to cancel the asserted patent’s claims in an inter partes review. In the ensuing appeal of the court’s decision, the Federal Circuit granted the patent owner’s (Jump Rope’s) unopposed motion for summary affirmance. Jump Rope Sys., LLC v. Coulter Ventures, LLC, Appeal 22-1624 (Fed. Cir. June 28, 2022). Jump Rope presented the unopposed motion after the... More
• Rigidly Interpreting Precedents May Foreclose an Equitable Doctrine Rigidly Interpreting Precedents May Foreclose an Equitable Doctrine – Cutting Expenses The Federal Circuit’s Judge Bryson has been presiding over two district court cases where he decided an important and recurring issue regarding collateral estoppel. In a consolidated order, he refused to apply collateral estoppel to certain fact-finding by the Patent Trial and Appeal Board on what prior art publications disclose relative to patent claims the patent owner contends are infringed. IOENGINE, LLC v. PayPal Holdings, Inc., Nos. 18-cv-452-WCB and 18-cv-826-WCB,... More
• A Decision Poised to Pivot on Credibility The Federal Circuit’s recent decision in Google LLC v. IPA Technologies, Inc., Appeals 2021-1179, -1180, and -1185 (Fed. Cir. May 19, 2022), offers three instructive reminders. First, a publication disqualified from consideration as prior art during prosecution may be resurrected as prior art during an AIA trial. Second, the burden of producing evidence is not static, but rather one that shifts among trial participants. Third, when presented with a “highly relevant evidentiary conflict”—like conflicting fact-witness testimony—the Patent Trial and Appeal... More
• Satisfying the Duty of Disclosure in AIA Trials In ClearOne, Inc. v. Shure Acquisition Holdings, Inc., Appeal 2021-1517, Slip Op. at 2 (Fed. Cir. June 1, 2022), the Federal Circuit affirmed a Patent Trial and Appeal Board order that refused to authorize a sanctions motion the petitioner requested after the Board issued its final written decision granting (in relevant part) the patent owner’s motion to substitute claims. As basis for the motion the petitioner alleged the patent owner violated its duty to disclose prior art.  According to the... More
• Estoppel Evolves Back in 2016, the Federal Circuit held that a petitioner retains the ability, after an adverse Patent Trial and Appeal Board decision, to assert un-instituted invalidity grounds it presented in its petition. The court reasoned that when the Board chooses not to institute certain petitioned grounds (e.g., due to redundancy), the petitioner could not have raised those grounds during the AIA trial and, therefore, cannot be estopped from pursuing those attacks in later litigation. Shaw Indus. Grp. v. Automated Creel... More
• So, You Invented a Numerical Range In Indivior UK Ltd. v. Dr. Reddy’s Laboratories S.A., Appeals 2020-2073, -2142 (Fed. Cir. Nov. 24, 2021), the Federal Circuit affirmed a Patent Trial and Appeal Board’s final decision canceling claims in Indivior’s patent claiming a polymer matrix-containing film. Certain claims in the patent recited an amount of polymer matrix inadequately disclosed, according to the Board, in a predecessor application to which the patent claimed priority. As a result, the claims’ effective filing date was so late that prior art... More
• Bizarre Facts Beget Bizarre Result Before the Federal Circuit’s recent decision in In re Vivint, Inc., Appeal 2020-1992 (Fed. Cir. Sept. 29, 2021), the Patent Trial and Appeal Board affirmed a reexamination examiner’s final rejection of Vivint’s patent claims as unpatentable over prior art. In due course, the Patent Office would have issued a certificate canceling those claims. But Vivint appealed the Board’s decision, not because the examiner’s/Board’s decisions were substantively incorrect, but because the Office should not have ordered reexamination. The AIA’s revisions to... More