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Ryan J. Schermerhorn

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Ryan Schermerhorn is a registered patent attorney who helps clients in all stages of patent prosecution. Mr. Schermerhorn is experienced in preparing and prosecuting domestic and foreign patent applications in mechanical, electrical, medical, e-commerce and business method arts. He has counseled clients on patentability, freedom to operate and patent invalidity and has reviewed and interpreted licensing and joint research agreements. Read full bio here.

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The Federal Circuit has once again vacated and remanded a PTAB decision on the basis that the PTAB did not adequately explain its reasons for finding a claimed invention obvious, but this time in the context of an appeal decision affirming an examiner’s rejection of pending claims.

In In re: Marcel Van Os et al., Appeal No. 2015-1975 (Fed. Cir. Jan. 3, 2017), the Federal Circuit vacated and remanded the PTAB’s affirmance, on appeal, of the examiner’s rejection of claims 38-41 of U.S. Patent Application No. 12/364,470 (“the 470 application”) as being obvious over U.S. Patent No. 7,231,229 (“Hawkins”) in view of U.S. Pub. No. 2002/0191059 (“Gillespie”).
Continue Reading Federal Circuit to PTAB (Once Again) – Explain Yourself!!!

Closeup of hands on clock face

Neither the Federal Circuit nor the PTAB has provided much guidance concerning the proper application of the one-year time-bar for filing IPRs when privity is alleged.  Recently, however, in AM General LLC v. UUSI, LLC, Case IPR2016-01049, Paper 14 (PTAB November 7, 2016), the PTAB has provided some guidance.

On May 18, 2016, Petitioner AM General LLC filed a Petition requesting inter partes review of various claims of U.S. Patent No. 5,570,666 (“the ‘666 Patent”).  In its Preliminary Response to the Petition, filed on August 19, 2016, the Patent Owner, UUSI, LLC, urged denial of the Petition, contending the petition was time barred. 
Continue Reading Petitioner Not Time-Barred By Service of COFC Complaint

Magnifying GlassWe previously reported on the Federal Circuit’s decision in Ethicon Endo-Surgery, Inc. v. Coviden, No. 2014-1771 (Fed. Cir. 2016) that the AIA does not preclude the same PTAB panel from rendering both institution and final decisions in an IPR, and we previously reported on the Federal Circuit’s denial, over Judge Newman’s strong dissent, of the Patent Owner’s petition for an en banc hearing of this decision.  On September 20, 2016, the Patent Owner, Ethicon, filed a petition for a writ of certiorari with the Supreme Court, requesting Supreme Court review, and reversal of, the Federal Circuit’s decision.
Continue Reading Petition Solicits Supreme Court Review of PTAB’s Authority to Institute IPRs

expired red square grungy vintage isolated stamp

It is well accepted that the broadest reasonable interpretation (BRI) standard, which the PTO employs during patent examination, and not the Phillips standard applied in district court proceedings, is generally the proper standard to be used when interpreting claims in Post-Grant proceedings such as IPRs and reexamination proceedings.  However, in In Re CSB-System International, Inc., Appeal No. 2015-1832, the Federal Circuit reminded the PTAB that the BRI standard is not to be applied in all Post-Grant proceedings.  Instead, the Federal Circuit reaffirmed its precedent that “when an expired patent is subject to reexamination, the traditional Phillips construction standard attaches.” (p. 8). The court further held that the Phillips standard also applies when the patent expires during reexamination.
Continue Reading Federal Circuit Reaffirms that Phillips applies when Patent has expired

Granted v2We previously reported the May 9, 2016, Patent Office’s study that the PTAB rarely grants motions to amend.  There, we explained that patent owners rarely file motions to amend and, even when such motions are filed, the PTAB rarely grants such motions. Last week, in Google Inc. and Apple Inc., v. ContentGuard Holdings, Inc., Case CBM2015-00040, Paper 8 (PTAB June 21, 2016), the PTAB granted a Patent Owner’s motion to amend. This case is thus a rare example of the PTAB’s willingness to grant a motion to amend when the Patent Owner provides detailed arguments evidencing why a proposed, substitute claim is patentable over the “prior art known to the patent owner.”
Continue Reading “It’s a Bird, It’s a Plane, NO it’s a Granted Motion to Amend.”

stamp denied with red text on whiteResponsive to public interest in whether it is too difficult for Patent Owners to amend claims during PTAB Trials, the Patent Office recently published a study providing aggregate data about motions to amend filed with the PTAB since its inception in 2013.  The study, which was published by PTAB Chief Judge Nathan Kelly in the May 9, 2016 edition of the USPTO’s “Director’s Forum Blog,” confirms what the public, and certainly the patent bar, has suspected since the AIA created the PTAB to handle IPR, CBM, and PGR Trials: (1) that Patent Owners very rarely filed motions to amend, and (2) motions to amend, when filed, are rarely successful.
Continue Reading Motion(s) to Amend (Almost Always) Denied!

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.