Now that Cuozzo Speed Techs., LLC v. Lee has been submitted to the Supreme Court, the next issue that may well make its way to the Court is the propriety of the Federal Circuit’s standard of reviewing the PTAB’s AIA trial decisions. Currently, the Federal Circuit reviews these decisions for substantial evidence. At least four Federal Circuit Judges do not, however, think that the court’s application of that review standard is consistent with the AIA and have concluded that the standard makes too little sense in the context of an appeal from the PTAB’s IPR decision. But because the court is bound by Supreme Court precedent to apply that standard of review, the Federal Circuit issued an order denying a petition Merck & Cie recently filed asking the full Federal Circuit to rehear a late-2015 decision issued by a divided three-judge panel in Merck & Cie v. Gnosis S.p.A., 808 F.3d 829 (Fed. Cir. 2015) (discussed here and here), rehearing en banc denied (Apr. 26, 2016) (order linked here).
Continue Reading On the Clock: Appellate Standard of Reviewing PTAB’s AIA Trial Decisions
No Appellate Review, No Matter: District Court Invalidates Patent After the PTAB Denies CBM Review
NRT Technology Corporation was not successful in petitioning the PTAB to institute CBM review of U.S. Patent No. 6,081,792, but was successful in moving a district court to dismiss an infringement action concerning the same patent on the basis that the patent claims ineligible (abstract) subject matter. Global Cash Access, Inc. v. NRT Tech. Corp., Case No. 2:15-cv-00822 (D. Nev. Mar. 25, 2016) (Order) (granting motion to dismiss). The apparently inconsistent PTAB and district court dispositions will no doubt encourage accused-infringers/putative-petitioners who do not succeed in initiating AIA (trial) review under a low evidentiary burden to try to invalidate the patent in district court under a higher evidentiary standard. Further, these decisions collectively demonstrate how a PTAB’s institution decision denying AIA review can be, without an appeal, effectively nullified by a parallel or later court proceeding.
Continue Reading No Appellate Review, No Matter: District Court Invalidates Patent After the PTAB Denies CBM Review
The Board’s Prerogative to Change its Mind May Doom Petition after Institution
In TriVascular, Inc. v. Samuels, Appeal No. 2015-1631 (Fed. Cir. Feb. 5, 2016), a unanimous Federal Circuit panel affirmed a PTAB final written decision that concluded the petitioner (TriVascular) did not meet its burden of demonstrating the challenged claims were unpatentable during inter partes review. TriVascular successfully petitioned the Board to institute the review after the patent owner (Samuels) accused TriVascular of infringing the same patent in a California federal court. TriVascular’s short-lived success, however, was tempered by the Board’s claim construction in the institution decision that differed from the construction TriVascular sought in its petition.
Continue Reading The Board’s Prerogative to Change its Mind May Doom Petition after Institution
Federal Circuit Affirms PTAB’s Victory on Invalidity Ground the Petition Did Not Even Present
In SightSound Techs., LLC v. Apple Inc., Appeal Nos. 2015-1159, -1160 (Fed. Cir. Dec. 15, 2015), the Federal Circuit affirmed the PTAB’s final written decisions in two CBM patent review proceedings that canceled claims in SightSound’s patents as being obvious over prior art (referred to as the CompuSonics publications), even though Apple did not present that specific challenge in its petitions. The Federal Circuit’s decision is important because it shows that the court will not review a PTAB decision to institute an AIA trial on a ground the petitioner did not present.
Continue Reading Federal Circuit Affirms PTAB’s Victory on Invalidity Ground the Petition Did Not Even Present
PTAB Refuses to Terminate AIA Trial Despite Applying the Estoppel Provision to Dismiss the Petitioner
The PTAB recently issued an order applying the estoppel provision of the AIA (35 U.S.C. § 325(e)(1)) to dismiss a petitioner from covered business method (CBM) patent review proceedings a few days before a consolidated final hearing. Apple Inc. v. Smartflash LLC, CBM2015-00015, Paper 49 (PTAB Nov. 4, 2015) (common order involving CBM2015-00016 and CBM2015-00018). The order is significant because it offers guidance on how the PTAB interprets this provision and applies it to decide whether a petitioner “reasonably could have raised” a patentability challenge clarified by a Supreme Court decision that was not available during an earlier CBM proceeding involving the same parties, the same patent, and the same claims.
Continue Reading PTAB Refuses to Terminate AIA Trial Despite Applying the Estoppel Provision to Dismiss the Petitioner
A 200% Increase in Appeals of Patent Office Decisions to the Federal Circuit
In August of 2012, the Federal Register published the Patent Office’s estimate of the number of AIA trial petitions the Office then expected to receive in each of the three succeeding fiscal years (each such year ends September 30). In October of 2015, the Patent Office published a report of the number of trial petitions it actually received during these fiscal years. The table below presents this same information:
Continue Reading A 200% Increase in Appeals of Patent Office Decisions to the Federal Circuit
PTAB Applies the Estoppel Provision of the AIA to Deny an IPR Petition
The PTAB recently denied institution of an inter partes review (IPR) on the basis of the estoppel provision of the AIA (35 USC § 315(e)). Apotex Inc. v. Wyeth LLC, IPR2015-00873, Paper 8 (PTAB Sept. 16, 2015). The decision is not appealable, and is significant because it offers guidance on how the PTAB will construe this provision and offers examples of when the PTAB will and will not apply the provision to deny grounds for an IPR.
Continue Reading PTAB Applies the Estoppel Provision of the AIA to Deny an IPR Petition
Move the Court to Award Attorney Fees Incurred in a Parallel PTAB Proceeding
Today, when served with a complaint for patent infringement, the accused routinely petition the PTAB to review the patentability o
f the asserted claims. Often enough, the accused first identifies its invalidity positions and prior art to the Patent Owner through litigation pleadings and discovery. Indeed, many even seek to settle the litigation before either party expends additional resources litigating the matter. But, often enough, the accused are spurned.
Continue Reading Move the Court to Award Attorney Fees Incurred in a Parallel PTAB Proceeding
Who Benefits from the Federal Circuit’s SAP v. Versata Decision?
The Federal Circuit recently issued its opinion deciding SAP v. Versata, an appeal of the first PTAB final written decision in a post grant AIA trial. The court’s opinion (split on one issue) is significant because it decides a number of issues that will guide pending and future AIA trials, especially CBM proceedings. Below is a short summary of who—patent owners or petitioners—can claim victory in the court’s five major conclusions.
Continue Reading Who Benefits from the Federal Circuit’s SAP v. Versata Decision?
Federal Circuit Upholds PTAB’s Application of its Rules to Decide Motions to Amend
Update: Overruled in part byAqua Products, Inc. v. Matal.
Earlier this week, we wrote about the post-hearing briefing the Federal Circuit invited in Microsoft Corp. v. Proxyconn, Inc., Case Nos. 2014-1542, -1543, Dkt. 49 (Fed. Cir. Apr. 13, 2015), and the questions it posed regarding the PTAB’s administration of inter partes review. The court issued its decision in that case yesterday, answering some of the questions it posed and, for the first time, reversed a PTAB claim construction, vacated the PTAB’s decision of unpatentability, and remanded the IPR for further proceedings.
Continue Reading Federal Circuit Upholds PTAB’s Application of its Rules to Decide Motions to Amend