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Kate Nuehring Su

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Kate Nuehring Su protects and enforces the intellectual property rights of her clients in all phases of complex litigation and patent prosecution. In addition to her legal experience, Ms. Nuehring Su has a background in engineering, including a degree in biomechanical engineering from Stanford University. Her extensive legal and technical knowledge enables her to devise successful strategies for clients across a range of industries. Read full bio here.

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The Patent Trial and Appeal Board designated as precedential two opinions with opposite outcomes on the issue of discretionary denial of inter partes review (IPR) petitions under 35 U.S.C. §314(a) in July.  In Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (May 13, 2020), the Board denied institution of an IPR due to a parallel district court proceeding in the Western District of Texas, whereas in Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-01393, Paper 24 (June 16, 2020), the Board instituted an IPR despite a parallel district court proceeding also occurring in the Western District of Texas. 
Continue Reading Opinions Designated As Precedential Illuminate How Factors Governing

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In In Re: IPR Licensing, Inc., Appeal Nos. IPR2014-00525, IPR2015-00074 (Fed. Cir. Nov. 22, 2019), the Federal Circuit vacated the Patent Trial and Appeal Board’s decision that a claim was invalid as obvious.  The claim had previously been in front of the Federal Circuit in an appeal in which Federal Circuit found insufficient record support for the Board’s conclusion that the claim was obvious and that there would have been a motivation to combine relevant prior art references.  In this appeal, the Federal Circuit determined that the only additional evidence that the Board cited on remand to support the conclusion that there would have been a motivation to combine the relevant prior art references was not part of the record before the Board. 
Continue Reading Federal Circuit Vacates Board Obvious Decision Relying Upon Reference

Federal Circuit Affirms Obviousness Decision by Board, Finds No APA Violation Based on New Characterization of Passage Providing Motivation to Combine

In Smith & Nephew, Inc. v. Arthrocare Corp., Appeal No. IPR2016-00918 (Fed. Cir. Aug. 21, 2019), the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision in an IPR to invalidate patent claims on the basis of obviousness, determining that the Board did not violate the Administrative Procedure Act (APA) by describing the motivation to combine the teachings of the prior art in different language than that used in the petition.  Additionally, the court affirmed the Board’s claim construction as reasonable and found that subjecting a pre-AIA patent to inter partes review was constitutional when the patent issued after the passage of the AIA. 
Continue Reading Federal Circuit Affirms Obviousness Decision by Board, No Violation

Federal Circuit Affirms Obviousness Decision by Board, Discusses Impact of Standing on Triggering of §315(b)’s Time Bar

In Hamilton Beach Brands, Inc. v. F’real Foods, LLC, Appeal No. IPR2016-01107 (Fed. Cir. Nov. 16, 2018), the Federal Circuit affirmed the Patent Trial and Appeal Board’s final written decision in an IPR upholding the patentability of a patent claim under 35 U.S.C. § 103. Additionally, the court discussed but did not determine whether improper standing at the time of filing a complaint might impact the application of the one-year time bar under 35 U.S.C. §315(b). The decision provides a good opportunity for practitioners to brush up on the fundamentals governing obviousness determinations and suggests that the case law surrounding the one-year time-bar under §315(c) may still evolve.
Continue Reading FC Affirms Obviousness Decision by Board Trigger of Time Bar

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 jurisdiction to review the order.  The court’s disposition of these issues remind practitioners that procedural timing is just as important as substantive argument in obtaining a desired legal outcome.
Continue Reading Successful IPR Petition Time Barred Under 35 U.S.C. §315(b) by Involuntarily Dismissed Complaint

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 the abbreviation “i.e.” in determining the proper scope of the claim terms. 
Continue Reading Federal Circuit Reverses, i.e. Overturns, Board’s Anticipation Decision Due to Overbroad Claim Construction

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).
Continue Reading Federal Circuit Remands Decision on Motion to Amend to Board to Apply and Interpret Aqua Products and SAS Institute

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 Graph III here), only four motions to amend substituting claims were granted in full before September 30, 2017, mere days before the Federal Circuit issued its en banc decision in Aqua Products.
Continue Reading Motion to Amend Substituting Claims Granted in Full, Possibly Reflecting the Change Wrought By Aqua Products

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.”
Continue Reading Avoid Creating Bad Blood with the Board

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 determine whether substitute claims submitted in a motion to amend compliant with 35 U.S.C. § 316(d) are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner. 
Continue Reading Board Issues Guidance on Motions to Amend in View of Aqua Products

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

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.