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Thomas L. Duston

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Tom is a hands-on, lead trial attorney who handles intellectual property litigation across a wide spectrum of technologies, from aerospace and biochemistry to Internet/e-Commerce and medical devices. He has served as lead trial counsel in more than 60 matters in federal courts throughout the country.  He has been named one of the Top 100 Super Lawyers® in Illinois, repeatedly named one of the Best Lawyers in America for Intellectual Property Litigation by U.S. News and World Report, voted a “Leading Lawyer” in the areas of Intellectual Property, Trade Secrets and Unfair Competition by his peers, and named by Managing IP  as one of its “IP Stars.” Read full bio here.

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crossed fingers at handshake as a symbol of breach of contract

The Federal Circuit continues to declare aspects of the PTAB’s work to be beyond its review.  Most recently, in Husky Injection Molding Systems Ltd., v. Athena Automation Ltd., Case Nos. 2015-1726, 2015-1727 (Fed. Cir. Sept. 23, 2016), the Federal Circuit, in a 2-1 decision, concluded that it lacked authority to question the PTAB’s refusal to extend the equitable doctrine of assignor estoppel to PTAB proceedings. We previously reported on the Federal Circuit’s opinion regarding the merits of the PTAB’s Final Decision invalidating the Husky patent. The following discussion instead focuses on those aspects of the Federal Circuit’s opinion concerning appellate review of the Board’s decision to institute review.
Continue Reading Federal Circuit Declares Unreviewable PTAB’s Refusal to Apply Assignor Estoppel

Traditional wooden Pinocchio toy. Italy.

In a recent non-precedential decision, the Federal Circuit suggested a very expansive interpretation for the oft-used phrase “adapted to.” Relying upon the prosecution history, the Federal Circuit determined that the Board correctly construed claims relating to interactive video programming, and on that basis affirmed the Board’s decision that the claims were anticipated by a prior art reference. Intertainer, Inc. v. Hulu, LLC, No. 2015-2065 (Fed. Cir. Sept. 26, 2016) (non-precedential).Continue Reading Federal Circuit Suggest Expansive Interpretation of “Adapted to” in Affirming CBM Cancellation

A handing to help their partner in mountains.

In a bit of “inside baseball,” the PTAB recently clarified the difference between supplemental evidence and supplemental information.  Practitioners would do well to give careful attention to this distinction.  The difference can have profound consequences to an IPR Petitioner.

In Generico LLC v. Dr. Falk Pharma GmbH, IPR2016-00297, Paper No. 15 (July 15, 2016), the PTAB entered an order regarding the conduct of proceedings.  The order addressed the Petitioner’s request to file a motion to supplement information pursuant to 37 C.F.R. §42.123.  The Petitioner sought to file information in response to objections the Patent Owner made to evidence submitted by Petitioner.  Specifically, the Patent Owner had objected that Petitioner’s prior art references would not have been relied upon by a person of ordinary skill in the art, and that the Petitioner’s declarant was not qualified to speak to the views of a person of ordinary skill in the art.  To address these objections, the Petitioner sought the PTAB’s authorization to file a supplemental declaration and documents from a parallel district court litigation.
Continue Reading Advise Petitioner to File Supplemental Evidence Instead Of Information

Vancouver, Canada - December 15, 2013: A Lego toy of Gandalf, the Wizard from The Lord of the Rings and The Hobbit. Gandalf is a member of the order of the Istari and one of the Maiar of Valinor. He lends counsel and leadership to Bilbo Baggins, the Fellowship of the Ring and the people of Middle Earth.

On July 6, 2016, the PTAB cancelled claims in a patent which had bedeviled more than 250 named defendants in litigation dating back to 2008.  The list of defendants reads like a Who’s Who of financial and commercial businesses, including the nation’s most prominent banks, credit card companies, online stock traders, e-Commerce retailers, cable and telecommunications companies, airlines, and even all twelve of the nation’s Federal Reserve banks.  Any plans the patent owner had to continue its siege of these vast tracts of economic activity were brought to a halt by the PTAB’s final written decision in MasterCard International, Inc. v. Stambler, Case CBM2015-00044, Paper 32 (PTAB 2016), which found that the petitioner, MasterCard, had proven the challenged claims were anticipated by and/or obvious over prior art.
Continue Reading PTAB Finds Motivation to Combine References, but Cancellation Comes Too Late for More than 200 Defendants

Ground Hog DayThe much anticipated argument in Cuozzo Speed Technologies, LLC v. Lee occurred Monday, April 25, 2016 before the United States Supreme Court.  One can glean some insight from the Justices’ questions and remarks, but the ultimate outcome in this seminal decision remains uncertain.  The following reflects the tenor of the remarks of seven of the Justices’ who spoke during oral argument.  In keeping with his much reported practice at these arguments, Justice Thomas remained mute.  The following discussion focuses exclusively on the arguments concerning whether or not the PTAB may employ the “broadest reasonable construction” standard in IPRs. 
Continue Reading Groundhog Day . . . Again: Observations on the Oral Argument in Cuozzo Speed Technologies, LLC v. Lee

Ounce of PreventionOn April 8, 2016, the U.S. District Court for the District of Colorado overturned a jury’s finding that defendant’s infringement was willful, relying in part on the fact that the PTAB had elected to institute inter partes review of one of the asserted patents. We have previously reported on a number of District Court decisions that have addressed whether, and in what circumstances, the denial of an IPR petition may serve as evidence.  The Colorado court’s decision appears to be the first to rely upon evidence that the PTAB instituted review to conclude, as a matter of law, that a defendant’s defenses were “objectively reasonable.”
Continue Reading The PTAB Vaccine: Institution of IPR Protects Against Willfulness Claim

Third StrikeThe Federal Circuit has rejected for the third time efforts by the Director of the PTO to preclude appellate review of whether challenged patent claims were properly deemed “covered business methods,” and thereby subject to CBM review.  Previously, in Versata Development Group, Inc. v. SAP America, Inc., the Federal Circuit concluded that its jurisdiction to hear appeals of the PTAB’s final written decisions empowered it to examine if challenged claims qualified for CBM review (we reported here).  In doing so, the Federal Circuit rejected contrary arguments of the Director who intervened on appeal. 
Continue Reading Called Third Strike, Is the PTO Director Out? Federal Circuit Rejects

Golden GooseOn January 15, 2016, the United States Supreme Court agreed to consider whether it is appropriate to give claims challenged in inter partes  review their “broadest reasonable construction.”  See Cuozzo Speed Tech., LLC v. Lee.  Given the Federal Circuit’s dismal recent track record when the Supreme Court has injected itself into disputed patent issues, practitioners are likely girding for a tectonic shift in IPR proceedings.  For those beleaguered by litigation from non-practicing entities, they may be justified in fearing that coveted IPR proceedings will become less useful as a bulwark against such cases.     
Continue Reading Court Reviews Use of Broadest Reasonable Construction IPR Proceedings

RoseShakespeare’s Juliet famously observes, “What’s in a name? That which we call a rose by any other name would smell as sweet.”  The PTAB begs to differ. While a generic computing device may not render abstract claims patentable, introduce it with a fancy nom de guerre and you have got yourself patentable subject matter.
Continue Reading PTAB to Shakespeare: “ ‘What’s in a Name?’ Are you Kidding? Everything!”

Recently, in the pages of this blog, we reported on the dire predictions made at the IPO Annual Meeting here in Chicago of the “end of days” for patents. Win or Draw or Lose The purported culprits?  The PTAB and the America Invents Act’s newly enacted Inter Partes Review and Covered Business Method Review.  “Well, allow me to retort,” to borrow a line from Samuel L. Jackson’s character in Pulp Fiction.
Continue Reading How I Learned to Stop Worrying and Love the Bomb: Response to IPO Panel on PTAB Proceedings

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.