An updated discussion of this issue is available here: Who Must Bear the Burden of Proof Regarding Patentability of Amended Claims?
The Federal Circuit confirmed in a precedential opinion that the burden to prove patentability of an amended claim in an IPR proceeding rests squarely with the patentee, and in deciding a motion to amend claims, the Board only need consider the arguments presented by the patentee, not perform a full reexamination of the proposed claims. In In re Aqua Products, Inc., Appeal No. 2015-1177 (Fed. Cir. May 25, 2016), the Federal Circuit affirmed the PTAB’s denial of patentee Aqua’s motion to substitute claims because Aqua failed to prove patentability of the substitute claims. Aqua then appealed challenging the Board’s amendment process.
Continue Reading Board Need Not Consider Arguments Beyond Those Actually Raised By Patentee In Motion To Amend
The Federal Circuit recently affirmed the Board’s IPR decision that IBS failed to satisfy its burden of demonstrating obviousness of the challenged claims of Illumina’s U.S. Patent No. 7,566,537 (“the ‘537 patent), and determined that the Board did not abuse its discretion in refusing to consider IBS’s reply brief. 
Biotechnology patent applicants dissatisfied with the examination of their patent applications can look to the PTAB for relief by filing an appeal – but they will need to be very, very patient. The procedures created by the America Invents Act (AIA) for challenging U.S. patents – inter partes review, post grant review, and covered business methods – have transformed strategies for contesting the validity of patents. In just a few years, the Patent Trial and Appeal Board (PTAB) has become one of the busiest forums for contesting patent validity, due in part because the PTAB must complete its review within 18 months of receiving a petition. Patent applicants dissatisfied with a patent examiner’s rejection of their patent application may appeal the rejections to the same PTAB that administers AIA trials. But, these applicants cannot expect the PTAB to decide their appeal with the same timeliness with which the PTAB completes AIA trials.
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 
In a recent decision appealing the PTAB’s finding of claims unpatentable in two different, but related re-examination proceedings, the Federal Circuit vacated and remanded the Board’s decisions based on reinterpretation of claim terms construed under the PTAB’s broadest reasonable interpretation (BRI) standard during the re-examination process (In re Varma, Appeal 2015-1502 and 2015-1667, Fed. Circ., March 10, 2016). This decision is one of 
In 
The 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 
Update: Overruled in part by 