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Michael R. Weiner

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Michael R. Weiner represents clients in patent infringement matters before district courts, post-grant proceedings before the U.S. Patent and Trademark Office, and in appeals to the U.S. Court of Appeals for the Federal Circuit. Mr. Weiner's litigation experience involves technologies such as endoscopic surgical instruments, pharmaceutical compositions, and mechanical devices such as mining equipment. Read full bio here.

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In EmeraChem Holdings, LLC v. Volkswagen Group of American, Inc. (Fed. Cir. June 15, 2017), the Federal Circuit determined that the Patent Owner’s uncorroborated declaration was insufficient to show that asserted prior art under pre-AIA 35 U.S.C. § 102(e) represented the work of the same inventive entity as the challenged claims, and with respect to certain claims the PTAB failed to provide sufficient notice and opportunity to respond. Accordingly, the court affirmed in part and vacated in part the PTAB’s decision that the challenged claims were unpatentable for obviousness.Continue Reading Uncorroborated Declaration Not Sufficient to Avoid § 102(e) Prior Art

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In Rovalma, S. A. Böhler-Edelstahl GmbH & Co., No. 2016-2233 (Fed. Cir. May 11, 2017), the Federal Circuit vacated the PTAB’s final written decision and remanded the case for the PTAB to provide a further explanation for its determination that the challenged claims were obvious. According to the court, the PTAB’s decision lacked sufficient detail necessary for the court to determine if the PTAB’s findings were supported by substantial evidence, or if the PTAB provided the Patent Owner proper notice and opportunity to respond to the PTAB’s claim construction and theory of unpatentability.Continue Reading Owner of Hot-Work Steel Processing Patent Burned by Its Own IPR Evidence

In Personal Web Technologies, LLC v. Apple, Inc., Case No. 2016-1174 (Fed. Cir. Feb. 14, 2017), the Federal Circuit upheld the PTAB’s construction of disputed claim terms, but did not resolve a dispute over whether the broadest-reasonable-interpretation standard (BRI) or Phillips standard should apply when the challenged patent expires shortly after the PTAB issues its final written decision. Despite the correct claim construction, the court vacated the decision and remanded the case to the PTAB for reconsideration of the merits of its decision on obviousness.

Apple filed an IPR petition challenging claims of Personal Web’s patent directed to methods of locating data and controlling access to the data by giving a data file a substantially unique name that depends on the file’s content. In determining that the challenged claims were unpatentable for obviousness, the PTAB construed the claim term “content-based identifier” and related terms, applying the BRI standard.
Continue Reading What Claim Construction Standard Applies If a Patent Expires During IPR Appeal?

In recent non-precedential decisions, Micrografx, LLC v. Google Inc., Case No. 2015-2090 (Fed. Cir. Nov. 29, 2016) (Micrografx I) and Micrografx, LLC v. Google Inc. (Micrografx II), Case No. 2015-2091 (Fed. Cir. Nov. 29, 2016), the Federal Circuit upheld three IPR final written decisions canceling challenged claims of Micrografx patents for anticipation, and denying a motion to amend claims. The court determined that any errors in claim construction were harmless, and that substantial evidence supported the PTAB’s findings of anticipation.
Continue Reading Federal Circuit Upholds Cancellation of Micrografx Patent Claims for Anticipation

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In Unwired Planet, LLC v. Google Inc., the Federal Circuit vacated the PTAB’s final decision in a CBM review because the PTAB had applied an overly broad standard to determine that the challenged claims were directed to a “financial product or service” subject to CBM review, and remanded the case for evaluation under the proper standard.

Google had filed a petition for CBM review of Unwired’s patent entitled “Method and System for Managing Location Information for Wireless Communications,” and in particular, claims directed to methods of limiting access to location information for wireless communication devices. According to Google, the patent is eligible for CBM review, and it notes that the specification discusses using the claimed methods to facilitate advertising, which would facilitate financial activity.
Continue Reading Federal Circuit Limits Scope of CBM Reviews

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In denying a petition for rehearing, the Federal Circuit determined in Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc. that under Cuozzo, the court lacks authority to review a PTAB decision that reconsidered an IPR institution decision, and then terminated the IPR because the petition failed to identify the real party in interest.

As we have previously discussed, the Supreme Court in Cuozzo determined that under 35 U.S.C. § 314(d), a PTAB decision on institution of an IPR is nonappealable, although such a decision might be appealable if it implicated constitutional questions or raised issues of the agency acting outside its statutory limits.
Continue Reading PTAB’s Reconsideration of Institution Decision Unreviewable on Appeal

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A PTAB decision denying a patent owner’s motion for discovery concerning privity illustrates what may be a carefully-structured business transaction that permitted a petitioner to avoid the effect of the one-year time-bar for filing a petition under 35 U.S.C. § 315(b). 
Continue Reading Petitioner Avoids One-Year Time Bar by Acquiring ANDAs after Filing IPR Petition

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In In Re Magnum Oil Tools International Ltd., the Federal Circuit reversed the PTAB’s final decision cancelling challenged claims for obviousness because the record did not include substantial evidence of a motivation to combine references, and because the PTAB improperly shifted the burden of proof on this issue to the patent owner.

Petitioner McClinton Energy Group filed an IPR petition challenging claims of a patent relating to technology for “fracking” (oil drilling using hydraulic fracturing). In fracking, a wellbore is drilled into the earth, and a fluid mixture is injected into the wellbore. Downhole plugs are used to divide the wellbore into separate sections so that different sections of the wellbore may be fracked at different times.
Continue Reading PTAB Improperly Shifted Burden of Proof in IPR

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In Cuozzo Speed Technologies, Inc., v. Lee, the Supreme Court affirmed the Federal Circuit’s decision, upholding the PTAB’s use of the BRI standard for claim interpretation in IPRs, and determining that 35 U.S.C. § 314(d) bars judicial review of the PTAB’s decision to institute review on grounds not specifically raised in the IPR petition.
Continue Reading Supreme Court Upholds Use of BRI Standard in Cuozzo

Know the RulesRevised rules for PTAB trials, which were published for comment in August 2015, have now been finalized and will be effective for all petitions filed on or after May 2, 2016.

As we previously reported, the new rules clarify procedures for addressing when the PTAB will apply a Phillips-type claim construction for patents that may expire before a final written decision is issued; substitute word count limits for briefs instead of page limits; incorporate a Rule 11-like certification for papers submitted to the PTAB, and revise the time period for exchange of demonstrative exhibits prior to final hearing.
Continue Reading New Rules Permit Testimony in Support of Preliminary Response

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.