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Ryan N. Phelan

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Ryan N. Phelan is a registered patent attorney who counsels and works with clients in intellectual property (IP) matters, with a focus on patents.  As a former technology consultant with Accenture and with a background in computer science and engineering, Ryan has extensive experience in computer system and software design, engineering, development and related technologies.  He has represented numerous Fortune 500 clients with patent matters in technical areas including electrical and software engineering, internet and e-commerce, computer networking, encryption and security, finance, insurance, consumer electronics, and mobile and telecommunications. Read full bio here.

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"Gavel on copy of escrow agreement, soft shadow. White background, soft shadow. Gavel has seen much use. Please see more gavel photos:"An updated discussion of this issue is available here: PTAB’s Time Bar Determinations Are Reviewable by the Federal Circuit

As we had predicted in a previous post, the Federal Circuit, on January 4, 2017, granted patent owner Wi-Fi One LLC’s petitions for rehearing en banc regarding the interpretation of, and interplay between, 35 U.S.C. § 314(d) (the No Appeal provision) and § 315(b) (the Time Bar provision).  A few months ago, we wrote about the related decision Wi-Fi One, LLC v. Broadcom Corp., Appeal 2015-1944 (Fed. Cir. Sept. 16, 2016), which the court’s order vacates:

In Wi­Fi, the patent owner (Wi­Fi One, LLC) argued that the IPR petitioner (Broadcom Corporation) was in privity with entities accused (and eventually adjudged) in parallel district court litigation of infringing the challenged patent. Those entities, the patent owner argued, would have been time­barred from seeking IPR under 35 USC § 315(b).
Continue Reading Federal Circuit to take AIA Time Bar issue En Banc

"Gavel on copy of escrow agreement, soft shadow. White background, soft shadow. Gavel has seen much use. Please see more gavel photos:"

Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is closely related to its decision whether to institute inter partes review and is therefore rendered nonappealable by§314(d).”

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On January 19, 2018, the Federal Circuit issued an order vacating the decision discussed in the post below and reinstating the appeal for reconsideration in view of the court’s en banc decision in Wi-Fi One LLC v. Broadcom Corporation, which we discuss here. A new decision on the merits may be expected later in 2018.

Original Post: In Click-to-Call Techs. v. Oracle Corp., Appeal 15-1242 (Fed. Cir. Nov. 17, 2016) (non-prec.), on remand from the Supreme Court for further consideration in view of Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016) (as we discussed here), the Federal Circuit again dismissed the patent owner’s (Click-to-Call’s) appeal, concluding that the court lacks jurisdiction to review a decision by the PTAB to institute an Inter Partes Review (IPR) petition over a patent owner’s objections that the IPR petition is time barred.
Continue Reading Federal Circuit Dismisses Appeal Based on AIA Time Bar, But Two Judges Call for En Banc Review

"Gavel on copy of escrow agreement, soft shadow. White background, soft shadow. Gavel has seen much use. Please see more gavel photos:"

The PTAB’s recent decision on remand in Corning Optical Comm. v. PPC Broadband (IPR2013-00342, Paper No. 57), and the related decision on appeal (815 F.3d 747 (Fed. Cir. 2016)), serve as a reminder that the broadest reasonable interpretation (BRI) standard does not permit an unreasonably broad construction.

In addition, the PTAB’s related order (see Paper 55), denying the parties’ requests for further briefing on remand, indicates that, when the Federal Circuit bases its claim construction on a party’s construction advanced during an earlier proceeding before the PTAB, the PTAB may choose to base its remand decision on the arguments and evidence in the record, without need for further briefing.
Continue Reading PTAB Upholds Claims Under Narrowed BRI Construction on Remand

Empty vintage court's room with table,chairs and microphones.

The PTAB’s August 22, 2016, decision in IPR2013-00440 on remand from the Federal Circuit, Dell, Inc. v. Acceleron, LLC,¹ sheds light on how the PTAB may treat seemingly new or different arguments raised post-petition.  After Dell, and as discussed below, practitioners may expect the PTAB to exercise a greater degree of scrutiny when considering arguments that differ from those raised in the original petition, or that are otherwise not responsive to a patent owner’s positions raised in a response.  See 37 C.F.R. § 42.23(b).  For petitioners, the decision should serve as a reminder that petitioners should satisfy their burden of proof based on arguments made in the petition, including originating alternative theories of invalidity where identified.  For patent owners, the decision suggests that the PTAB may be more receptive to entertaining motions or arguments from patent owners seeking to respond to allegedly new or different arguments raised post-petition.
Continue Reading PTAB’s Decision on Remand in Dell v. Acceleron Shows Strict treatment of Post-Petition Arguments

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.