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What Claim Construction Standard Applies If a Patent Expires During IPR Appeal?

By Michael R. Weiner on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
In Personal Web Technologies, LLC v. Apple, Inc., Case No. 2016-1174 (Fed. Cir. Feb. 14, 2017), the Federal Circuit upheld the PTAB’s construction of disputed claim terms, but did not resolve a dispute over whether the broadest-reasonable-interpretation standard (BRI) or Phillips standard should apply when the challenged patent expires shortly after the PTAB issues its … Continue Reading

PTAB Declines to Institute IPR on Immersion’s Indefinite Means Plus Function Claims

By Lynn L. Janulis, Ph.D. on Posted in Claim Construction, Institution / Denial, Inter Partes Review, IPR, Section 112, Sections 102/103
Petitioners are finding themselves caught in a Catch-22.  The PTAB declares claims too indefinite under Section 112 to construe, but then declines to address the patentabilty of the claims.  Section 112 deficiencies are not grounds to challenge a patent in an IPR, but the PTAB has authority to find such deficiencies. Recently, the PTAB decided … Continue Reading

Federal Circuit Upholds Cancellation of Micrografx Patent Claims for Anticipation

By Michael R. Weiner on Posted in Amendments, Claim Construction, Inter Partes Review, IPR
In recent non-precedential decisions, Micrografx, LLC v. Google Inc., Case No. 2015-2090 (Fed. Cir. Nov. 29, 2016) (Micrografx I) and Micrografx, LLC v. Google Inc. (Micrografx II), Case No. 2015-2091 (Fed. Cir. Nov. 29, 2016), the Federal Circuit upheld three IPR final written decisions canceling challenged claims of Micrografx patents for anticipation, and denying a … Continue Reading

Federal Circuit Vacates Board’s Decision Cancelling Method Claims for Purchasing Goods and Services Based on Unreasonable Claim Interpretation

By Kate Nuehring Su on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
The Federal Circuit recently vacated PTAB final written decisions that rested on a claim construction contradicted by the patent’s prosecution history. Specifically, in D’Agostino v. Mastercard Int’l Inc., No. 2016-1592, 2016-1593 (Fed. Cir. December 22, 2016), the court vacated the Board’s IPR decisions of unpatentability of method claims in two patents directed to processes for … Continue Reading

PTAB Should Have Canceled All Challenged Claims in CBM Reviews

By Lynn L. Janulis, Ph.D. on Posted in Appeals, Claim Construction, Covered Business Method, Post Grant Review, Section 101
In Apple, Inc. v. Ameranth, Inc. (Fed. Cir. 2016), the Federal Circuit reviewed the final written decisions in CBM reviews of three related patents owned by Ameranth, Inc., directed to computerized systems for generating and displaying menus for use in the restaurant industry.  The court determined that the PTAB properly construed all disputed claim terms, … Continue Reading

PTAB May Institute an IPR Proceeding on a Subset of Challenged Claims

By Matthew R. Carey on Posted in Claim Construction, Institution / Denial, Inter Partes Review, IPR
An updated discussion of this issue is available here: Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims The Federal Circuit recently denied a petition for rehearing en banc, effectively reiterating that the PTAB may, in its sole discretion, choose to institute an IPR proceeding on some, but not all, of the … Continue Reading

Federal Circuit Affirms Board’s Decision Cancelling Claims for Oil Drilling Equipment Based on Broad Claim Construction

By Kate Nuehring Su on Posted in Claim Construction, Inter Partes Review
In Schoeller Bleckmann Oilfield v. Churchill Drilling Tools U.S., No. 2016-1494 (Fed. Cir. November 9, 2016) (non-prec.), the court affirmed the Board’s IPR decision of unpatentability of claims directed to oil-drilling equipment.  The court refused to construe the challenged claims as limited to a disclosed embodiment, rejecting the patentee’s argument that the claim term “ball-like” … Continue Reading

PTAB Upholds Claims Under Narrowed BRI Construction on Remand

By Ryan N. Phelan on Posted in Claim Construction, Inter Partes Review
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 … Continue Reading

Ignore Occam’s Razor at your Peril

thumbnail image of DNA strandBy William K. Merkel, Ph.D. on Posted in Appeals, Biotechnology, Claim Construction, Sections 102/103
In IPR 2015-01127, PAR Pharmaceuticals, challenged claims 1-11 of USPN 8,404,215 owned by Horizon Therapeutics, LLC on grounds of obviousness over various combinations of six references.  Lupin Ltd. and Lupin Pharmaceuticals, Inc. filed another challenge to the claims of the ‘215 patent on the same grounds using the same arguments and evidence as used by … Continue Reading

District Court Rejects Indefiniteness Argument Despite Board Finding of No Corresponding Structure for Means-Plus-Function Claim

By Kate Nuehring Su on Posted in Claim Construction, Inter Partes Review, Section 112
A pair of recent decisions, one from a federal district court and another from the PTAB, highlight the potential of inconsistent results regarding patent validity. In Microwave Vision, S.A. v. ETS-Lindgren Inc., Civ. Action No. 1:14-CV-1153-SCJ (D. Ga. Sept. 20, 2016), the court denied an accused infringer’s (ETS’s) motion for summary judgment of invalidity, after … Continue Reading

No Written Description, No Problem when Prosecution History Disclaimer is Applied

By Sharon M. Sintich, Ph.D. on Posted in Claim Construction, Inter Partes Review, Section 112
The Patent and Trial Appeal Board invoked the doctrine of prosecution history disclaimer to construe the claims at issue narrowly for the inter partes review of U.S. Patent No. 5,884,033; and thus, concluding that the claims had not been shown to be unpatentable in light of prior art. The Board rejected the Petitioner’s additional arguments … Continue Reading

Federal Circuit Suggest Expansive Interpretation of “Adapted to” in Affirming CBM Cancellation

By Thomas L. Duston on Posted in Claim Construction, Sections 102/103
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 … Continue Reading

Federal Circuit Reaffirms that Phillips applies when Patent has expired

By Ryan J. Schermerhorn on Posted in Claim Construction
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., … Continue Reading

“Providing . . . information” Step Given No Patentable Weight

By Michael Muczynski on Posted in Claim Construction, Inter Partes Review, Sections 102/103
The PTAB recently addressed the limits on strategies to patent drug labeling, canceling claims directed to a method of supplying a pharmaceutical product where the method includes a step of providing certain “information” to the medical provider. According to the PTAB, the claimed step of providing the information is entitled to no patentable weight under … Continue Reading

Federal Circuit Confirms Prevailing Party Cannot Appeal to Correct PTAB’s Claim Construction

By Tiffany D. Gehrke on Posted in Appeals, Claim Construction
The prevailing party in a PTAB proceeding cannot appeal the claim construction used. In SkyHawke Tech. LLC v. Deca Int’l Corp., Appeal Nos. 2016-1325 and 2016-1326, Patent Owner SkyHawke prevailed in an inter partes reexamination filed by Deca challenging claims of SkyHawke’s U.S. Patent No. 7,118,498.  Unsatisfied with the PTAB’s claim construction used in reaching that … Continue Reading

“It’s a Bird, It’s a Plane, NO it’s a Granted Motion to Amend.”

By Ryan J. Schermerhorn on Posted in Amendments, Claim Construction, Covered Business Method, Inter Partes Review, Post Grant Review, Sections 102/103
We 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 … Continue Reading

An Overview of Amendments to the PTAB Rules

By Lynn L. Janulis, Ph.D. and Sharon M. Sintich, Ph.D. on Posted in Amendments, Claim Construction, Inter Partes Review
On June 30, 2016, lead APJ Jacqueline Wright Bonilla provided an overview of the new PTAB rules during the Biotechnology/Chemical/Pharmaceutical Customer Partnership (BCP) Conference.  The final rule on Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, which we have previously discussed [April 21, 2016 and August 20, 2015] … Continue Reading

PTAB Grants Motion to Amend Claims

By William K. Merkel, Ph.D. on Posted in Amendments, Claim Construction, Inter Partes Review, Post Grant Review, Section 112, Sections 102/103
In IPR2015-00208, Shinn Fu petitioned for IPR of USPN 6,681,897 owned by Tire Hanger.  All five claims of the patent were drawn to methods of supporting vehicle wheels removed from a vehicle while on a service lift, wherein the supports would allow technicians to remove and replace the wheels without risking back injury by bending.  … Continue Reading

Groundhog Day . . . Again: Observations on the Oral Argument in Cuozzo Speed Technologies, LLC v. Lee

By Thomas L. Duston on Posted in Amendments, Claim Construction, Institution / Denial, Inter Partes Review, Legislation
The 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 … Continue Reading

Federal Circuit Gives a Geometry Lesson when Correcting the PTAB’s Claim Construction

By Eric M. Brusca, Ph.D. on Posted in Claim Construction, Inter Partes Review
In Pride Mobility Prods. Corp. v. Permobil, Inc., the Federal Circuit partially affirmed the PTAB’s decision cancelling claims in two Pride Mobility Products wheelchair patents.  Disagreeing with the Board’s conclusions as to one of the canceled claims, the Federal Circuit concluded that the Board’s claim construction of “substantially planar” and “oriented perpendicular” did not make … Continue Reading

Another “Reasonable” Re-Interpretation by the Federal Circuit

By Katherine L. Neville, Ph.D. on Posted in Amendments, Appeals, Claim Construction
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., … Continue Reading

PTAB Cannot Cancel Claim Based on New Argument Raised at Final Hearing

By Michael R. Weiner on Posted in Claim Construction, Inter Partes Review, Trial Procedures
In Dell, Inc. v. Acceleron, LLC, Case No. 2015-1513, -1514 (Fed. Cir. 2016), the Federal Circuit vacated in part the PTAB’s final written decision in IPR2013-00440, on the basis that the PTAB improperly canceled a claim based on a factual assertion first raised by the petitioner at final hearing, too late for the patent owner … Continue Reading

CAFC Puts the “Reasonable” Back in the BRI Standard

By Marshall Gerstein on Posted in Claim Construction
In a pair of decisions from related IPR appeals, the Federal Circuit reversed and remanded portions of two final written decisions related to the same patent and parties because the PTAB’s construction of the claims was unreasonably broad. See, PPC Broadband, Inc. v. Corning Optical Comm’ns, Appeal Nos. 2015-1361, et al. (Fed. Cir., Feb. 22, 2016); … Continue Reading

The Board’s Prerogative to Change its Mind May Doom Petition after Institution

By Sandip H. Patel on Posted in Appeals, Claim Construction, Inter Partes Review, Trial Procedures
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 … Continue Reading
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