Marshall Gerstein

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In May 2019, the PTAB designated precedential two IPR decisions related to its discretion to institute inter partes review.

In Valve Corp. v. Electronic Scripting Products, Inc., the Board denied institution under 35 U.S.C. § 314(a), applying the precedential General Plastic factors to deny institution of a follow-on petition.  See General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 17-18 (PTAB Sept. 6, 2017)(precedential) and our post about this case.  The Board determined that all the General Plastic factors weighed against institution.
Continue Reading PTAB Precedential Decisions on Discretion to Institute Inter Partes Review

The Federal Circuit on June 14 affirmed Patent Office decisions in inter partes review (IPR) proceedings canceling patents the University of Minnesota owned, concluding that “state sovereign immunity does not apply to these proceedings.” The court’s conclusion is not limited to instances where, for example, a state university waives its sovereign immunity by asserting a patent in federal court proceedings. One broad import of the court’s holding therefore is that all state university patents are vulnerable to attack in PTO proceedings. Regents of the Univ. of Minn. v. LSI Corp., Appeal 2018-1559 (Fed. Cir. June 14, 2019); Regents of the Univ. of Minn. v. Ericsson Inc., Appeals 2018-1560 et seq. (Fed. Cir. June 14, 2019).

In Matthews International Corporation v. Vandor Corporation, No. 2017-1889 (Fed. Cir. Mar. 27, 2018) (non-precedential), the Federal Circuit affirmed the PTAB’s final written decision to uphold the claims of Vandor’s patent that Matthews challenged in inter partes review. The claims at issue “are directed to ‘a casket arrangement’ made of pliable material, such as cardboard,” in which side and end panels of the casket can be folded to allow the casket to be reconfigured and condensed for ease in shipping and storage. According to the PTAB and the Court, Matthews failed to prove by a preponderance of the evidence that the claims were anticipated by the prior art, even though the claims may be obvious.
Continue Reading Federal Circuit Puts Nail in Coffin For Petitioner’s Case Challenging Casket Patent

Despite disagreeing with the PTAB’s preferred claim construction, the Federal Circuit in Arendi S.A.R.L. v. Google LLC, Case No. 2016-1249 (Fed. Cir. Feb. 20, 2018) nevertheless determined that the PTAB had correctly canceled the challenged claims.

The Board had offered two, alternative rulings invalidating all claims on obviousness grounds. In its primary ruling, the Board construed the claims after rejecting the argument that a disclaimer was made during prosecution.
Continue Reading PTAB Was Wrong to Ignore an Applicant’s Prosecution Disclaimer Because of Examiner’s Reasons for Allowance

It is undisputed that institution of an inter partes review (IPR) is time-barred under 35 U.S.C. § 315(b) if the petition is “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. The Court of Appeals for the Federal Circuit recently determined that the Patent Trial and Appeal Board’s time bar determinations are appealable. Since that decision, whether a party is considered “a privy of the petitioner” has been the source of recent dispute.
Continue Reading Federal Circuit Upholds Board’s Use of Control Standard of Privity to Assess Time Bar

In General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., Case No. 2017-1012 (Fed. Cir. May 4, 2018), the Federal Circuit affirmed the PTAB’s August 2016 decision that General Hospital Corporation’s (GHC) claims involved in an interference proceeding (that GHC requested) failed to meet the written description requirement. But the court also vacated the PTAB’s denial of GHC’s contingent motion to add a new claim as arbitrary and capricious because the PTAB did not follow its own Standing Order. The court therefore remanded the case to the PTAB to decide remaining issues in the interference.
Continue Reading Federal Circuit Splits Hairs in Hair Removal Product Interference Proceeding

The Federal Circuit upheld the PTAB’s mixed decisions in IPRs filed by Google to challenge claims of two Personal Audio LLC patents asserted against Apple, Samsung, Amazon and Research in Motion, in addition to Google. Google LLC v. Personal Audio LLC, Nos. 2017-1162, -1166, -2110, -2111 (Fed. Cir. Aug. 1, 2018) (non-precedential).
Continue Reading Mixed Result Upheld in Personal Audio IPRs

In affirming a PTAB IPR decision canceling claims for obviousness, the Federal Circuit concluded that the PTAB’s reliance on references not included in the original petition did not violate due process or the patent owner’s procedural rights under the Administrative Procedure Act (APA).  Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372 (Fed. Cir. 2018).

Citing Genzyme Therapeutic Products Ltd. v. Biomarin Pharmaceutical. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016) (discussed here), the court stated that new evidence was to be expected during an IPR and was permissible under the APA provided the opposing party receives notice and an opportunity to reply. 
Continue Reading PTAB May Cite New References Not Cited in the IPR Petition

In Altaire Pharm., Inc. v. Paragon Biotek, Inc., Case No. 2017-1487 (Fed. Cir. May 2, 2018), the Federal Circuit reversed in part a PGR final written decision that upheld the patentability of challenged claims, and determined that a risk of a future lawsuit for patent infringement may be sufficient to establish Article III standing for the appeal.

Under Supreme Court precedent, Article III standing requires: (1) a concrete and particularized injury, (2) caused by the challenged conduct, (3) which can be redressed by a judicial decision. Spokeo, Inc. v. Robins, 136 S. Ct. 1540 (2016). Ironically, a party that has not been charged with infringement may have sufficient standing to file a petition with the PTAB, but lack standing to appeal the PTAB’s final decision to an Article III court.
Continue Reading When is There Standing to Appeal a PGR Final Written Decision?

Can the disclosure in a prior art reference be too extensive for the art not to anticipate? According to a recent decision, the Federal Circuit apparently thinks so.

In Microsoft Corp. v. Biscotti Inc., Case Nos. 2016-2080, -2082, -2083 (Fed. Cir. Dec. 28, 2017), a split Federal Circuit panel affirmed a Board’s decision—also a split decision with one judge dissenting—that the contested claims were not invalid for anticipation, determining that the factual findings of the Board’s majority were supported by substantial evidence. But, in dissent, Judge Newman criticizes the panel majority for misperceiving the law of anticipation and finding that a person of skill in the art would not “at once envisage” the claimed arrangement of limitations due to the breadth of disclosure in the prior art.
Continue Reading A Split Federal Circuit Panel “at Once Envisaged” Different Conclusions of Anticipation

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.

Learn more

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.