Claim Construction

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Pills flowing out of a bottle of prescription medicine with information of their possible serious side effects.

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 the “printed matter” doctrine where it is not functionally related to other elements of the claimed method.  Specifically, even if the claim says that the information is “sufficient to” cause some effect (e.g., for a medical provider to avoid treating a patient) there is no functional relationship with the claim if the claim doesn’t recite that effect.   Praxair Distribution Inc. v. Mallinckrodt Hospital Prods. IP Ltd., IPR2015-00529.
Continue Reading “Providing . . . information” Step Given No Patentable Weight

Little boy trying to reach the sky. Sunset scenery.

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 decision, SkyHawke appealed to the Federal Circuit requesting “[c]orrection of the PTAB’s claim construction and affirmance of the ultimate decision.”  (p. 2).
Continue Reading Federal Circuit Confirms Prevailing Party Cannot Appeal to Correct PTAB’s Claim Construction

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.”

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] was published on April 1, 2016, and was later revised in a correction to the final rule on April 27, 2016.  APJ Bonilla commented on the new rules relating to the standard for claim construction, preliminary responses by the patent owner, including testimonial evidence, word count, Rule 11-type certification, and motions for sanctions. 
Continue Reading An Overview of Amendments to the PTAB Rules

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.  By all accounts, Shinn Fu mounted a strong attack against all claims in the ‘897 patent, and the PTAB instituted review.  Foregoing a dogged defense of the granted claims, Tire Hanger maintained a clear head and responded to the petition by filing a contingent motion to amend the claims rather than a Patent Owner Response. 
Continue Reading PTAB Grants Motion to Amend Claims

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

Geometric Shapes BlackboardIn 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 any “ordinary geometric sense.”  In reversing the Board’s decision with respect to this single claim, the Federal Circuit gave the Board a much-needed refresher in geometry.
Continue Reading Federal Circuit Gives a Geometry Lesson when Correcting the PTAB’s Claim Construction

Bat vs BatIn 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 several recent decisions in which the Federal Circuit has taken the opportunity to reinterpret the PTAB’s broadest “reasonable” interpretation of the claims during a post grant proceeding and change the interpretation to be more “reasonable” in light of the specification and actual claim language.
Continue Reading Another “Reasonable” Re-Interpretation by the Federal Circuit

Empty vintage court's room with table,chairs and microphones.

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 to meaningfully respond.
Continue Reading PTAB Cannot Cancel Claim Based on New Argument Raised at Final Hearing

3D Human character holding golden alphabet letter R, 3d render, isolated on white

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); PPC Broadband, Inc. v. Corning Optical Comm’ns, Appeal No. 2015-1364 (Fed. Cir., Feb. 22, 2016). The Federal Circuit highlighted the differences between the BRI standard applied by the USPTO and the PTAB and the Phillips standard applied in the courts, and in analyzing the PTAB’s application of the BRI standard, the CAFC focused extensively on the reasonableness of the PTAB’s construction, differentiating between a broadest possible interpretation, which may be overly broad, and the broadest reasonable interpretation in light of the claims and specification.
Continue Reading CAFC Puts the “Reasonable” Back in the BRI Standard

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.