Institution / Denial

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Federal Circuit Declares Unreviewable PTAB’s Refusal to Apply Assignor Estoppel

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 … Continue Reading

Petition Solicits Supreme Court Review of PTAB’s Authority to Institute IPRs

We previously reported on the Federal Circuit’s decision in Ethicon Endo-Surgery, Inc. v. Coviden, No. 2014-1771 (Fed. Cir. 2016) that the AIA does not preclude the same PTAB panel from rendering both institution and final decisions in an IPR, and we previously reported on the Federal Circuit’s denial, over Judge Newman’s strong dissent, of the … Continue Reading

Federal Circuit Again Refuses to Review PTAB’s Application of the Time Bar to AIA Petitions

An updated discussion of this issue is available here: Federal Circuit to Take AIA Time Bar Issue En Banc The Federal Circuit has again concluded it may not review the PTAB’s institution of inter partes review (IPR) over a patent owner’s objections that the IPR petition is time barred. Wi-Fi One, LLC v. Broadcom Corp., … Continue Reading

Analogous Art: A Tale of Two Decisions

In two recent PTAB decisions, Tissue Transplant Technology Ltd. & Human Biologics of Texas, Ltd., v. Mimedx Group, Inc., Case IPR2015-00420, Paper 25 (PTAB July 7, 2016) and Dexcowin Global, Inc., v. Aribex, Inc. Case IPR2016-00440, Paper 13 (PTAB July 7, 2016), the Board reached opposite conclusions regarding whether the petitioner’s prior art was analogous … Continue Reading

The Possibility of Inconsistent Results Inherent to Congress’s Design of AIA Trial Reviews

In Cuozzo Speed Technologies, LLC v. Lee, the Supreme Court recognized that a “district court may find a patent claim to be valid, and the agency may later cancel that claim in its own review.”  The Court also recognized that because of the different evidentiary burdens in court versus before the agency—the Patent Office—“the possibility … Continue Reading

For CBM Standing, Is “Incidental To” a Financial Product or Service Enough?

If a patented mobile phone app can locate a nearby ATM machine, are the claims of that patent subject to CBM review because ATMs are used in financial transactions? What if the claim could cover a business entity that, incidentally, might also push advertisements to a mobile phone? Is it enough that a claim is … Continue Reading

En Banc Rehearing Petition Denied – PTAB Retains Authority to Institute IPR and Issue Final Decision

We previously reported on the Federal Circuit’s decision that neither the AIA nor the Constitution precludes the same PTAB panel from rendering both institution and final decisions in Ethicon Endo-Surgery, Inc. v. Coviden LP, No. 2014-1771 (Fed. Cir. 2016).  Last week, in a 10-1 decision, the Federal Circuit denied Ethicon’s petition for rehearing en banc.… Continue Reading

Supreme Court Vacates Federal Circuit Decision that Refused to Review PTAB’s Application of the Time Bar to AIA Trials

An updated discussion of this issue is available here: Federal Circuit to Take AIA Time Bar Issue En Banc In a non-precedential decision late last year, the Federal Circuit dismissed a patent owner’s appeal of a Patent Trial and Appeal Board decision that refused to apply a statutory time-bar to deny institution of an inter … Continue Reading

Supreme Court Upholds Use of BRI Standard in Cuozzo

In Cuozzo Speed Technologies, Inc., v. Lee, the Supreme Court affirmed the Federal Circuit’s decision, upholding the PTAB’s use of the BRI standard for claim interpretation in IPRs, and determining that 35 U.S.C. § 314(d) bars judicial review of the PTAB’s decision to institute review on grounds not specifically raised in the IPR petition.… Continue Reading

Rare Grant of Rehearing of Denial of Petition for Inter Partes Review

The Board initially denied institution of Mylan Pharmaceuticals’ petition for inter partes review of U.S. Patent No. RE44,186, owned by AstraZeneca.  After a rare grant of Mylan’s request for rehearing, the Board reconsidered the record and decided to institute the IPR.  The decision to institute focused on the content of Mylan’s expert testimony; and although … Continue Reading

Federal Circuit Confirms PTAB Can Cite Prior Art in IPR Final Decision That Was Not In Grounds Of Institution

In a recent appeal from a PTAB final written decision, the Federal Circuit determined that a patentee was not denied notice or an opportunity to respond to references cited in the final written decision as representing the state of the art,  but that were not the basis for a grounds for institution.  (Genzyme Therapeutic Prods. … Continue Reading

The PTAB Has No Sympathy for the Last Minute Filer

Institution was denied in two IPR proceedings on the grounds that the petitions were filed more than one year after petitioner was served with a complaint alleging patent infringement. The documents were electronically filed but proof of payment of filing fees were one minute and nine minutes late, respectively. Additionally service had not been completed … Continue Reading

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

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

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., … Continue Reading

Called Third Strike, Is the PTO Director Out? Federal Circuit Again Rejects Intervenor’s Argument that it Lacks Jurisdiction to Review Qualifications for CBM Review

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 … Continue Reading

Petitioner’s Fatal Failure to Dot the “i”s in Allegedly Published Prior Art

In Hewlett-Packard Co. v. U.S. Philips Corp., et al., IPR2015-01505, Paper 16 (Jan. 19, 2016), HP’s Petition  asserted that the claims of the patent at issue, US 5,777,992 relating to MPEG audio, were invalid in view of three references, each allegedly a “printed publication”: (1) Chambers; (2) MPEG 89-051; and, (3) MASCAM 1988. In its … Continue Reading

Federal Circuit Affirms PTAB Panel’s Authority to Institute IPRs and Issue Final Decision

The AIA explicitly bestows the USPTO Director with the authority to institute IPRs and the PTAB with the authority to decide the ultimate question of patent validity.  The Director delegated the authority to institute IPRs to the Board, but is it proper to assign the decision to the same APJs that render a final decision?  … Continue Reading

Estoppel Applied in Second CBM to Later-Obtained Patent and Evidence

Six days after issuing a final decision holding the claims of U.S. Patent No. 7,711,100 unpatentable under 35 U.S.C. § 101 in a first CBM review, Square, Inc. v. Unwired Planet, LLC, CBM2014-00156, (PTAB Dec. 22, 2015), the PTAB issued a decision denying institution in a second CBM Petition filed by the same Petitioner for … Continue Reading

One Post-AIA Claim Risks PGR For All Claims

In its seventh PGR institution, the PTAB recently decided for the first time that a patent asserting a pre-AIA effective filing date was eligible for post-grant review because it contained at least one claim that was only entitled to a post-AIA effective filing date.  Although some claims were entitled to a pre-AIA effective filing date, … Continue Reading

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 … Continue Reading

PTAB to Shakespeare: “ ‘What’s in a Name?’ Are you Kidding? Everything!”

Shakespeare’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
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