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 the same patent, determining that the petitioner was estopped under 35 U.S.C. § 325(e)(1) from raising the grounds of the second petition, based on a later-identified, prior-art patent and later-obtained declaration evidence, because the later-identified prior art could have been discovered earlier and because it was foreseeable that the additional declaration evidence would have been needed in the first case. Square, Inc. v. Unwired Planet, LLC, CBM2015-00148, Paper 14 (PTAB Dec. 28, 2015).
Continue Reading Estoppel Applied in Second CBM to Later-Obtained Patent and Evidence
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, PGR was instituted for all of the patent claims, on all five of the prior art grounds asserted by the petitioner.
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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 that specific challenge in its petitions. The Federal Circuit’s decision is important because it shows that the court will not review a PTAB decision to institute an AIA trial on a ground the petitioner did not present.
Continue Reading Federal Circuit Affirms PTAB’s Victory on Invalidity Ground the Petition Did Not Even Present
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 PTAB to Shakespeare: “ ‘What’s in a Name?’ Are you Kidding? Everything!”
Institution Decisions are Nonappealable. Settled? Maybe Not Yet.
The ability to appeal the determination on institution of an IPR is expressly limited by statute. 35 U.S.C. § 314(d) states: “The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” An identically-phrased limitation is also applicable to PGR institution decisions at 35 U.S.C. § 324(e), and by extension, to CBMR institution decisions. On its face, this part of the post-grant proceedings schema seems clear and simple: PTAB institution decisions are not to be appealable.
Continue Reading Institution Decisions are Nonappealable. Settled? Maybe Not Yet.
Coalition for Affordable Drugs PTAB Scorecard
In the ongoing saga of the Coalition for Affordable Drugs (CFAD) vs. the pharmaceutical industry, there has been quite a bit of movement recently by the PTAB on institution of many of CFAD’s earliest-filed IPR petitions. To date, CFAD has filed 33 petitions for IPR, some of them multiple petitions against the same patent, and there have been 17 institution decisions by the PTAB. So, how does CFAD seem to be faring: are they having more or less success than any other petitioner?
Continue Reading Coalition for Affordable Drugs PTAB Scorecard
Denial of IPR Institution Doesn’t Make Invalidity Case Unreasonable
Short of invalidating a patent, can the outcome of IPR dictate the outcome of a district court case? The interplay between PTAB and district courts remains uncertain. As we’ve previously reported here and here, sometimes district courts give weight to PTAB decisions, and sometimes they don’t.
Continue Reading Denial of IPR Institution Doesn’t Make Invalidity Case Unreasonable
Split PTAB Ruling Allows Parties to Join Their Own Petitions
An expanded, split panel of the PTAB recently decided that it may be appropriate to join the same party’s serially-filed IPR petitions into a single proceeding, even when one such petition would otherwise be time-barred but for the joinder. Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corp., IPR2015-00762, Paper 16 (PTAB Oct. 5, 2015). The decision offers guidance on situations where the PTAB may exercise discretion in consolidating proceedings involving the same petitioner, and broadly interprets the statute to permit joinder of the same parties and issues.
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How I Learned to Stop Worrying and Love the Bomb: Response to IPO Panel on PTAB Proceedings
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. 
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
IPO Annual Meeting Panel Spars Over Fairness of Current IPR System
Welcome to all of you who are new readers joining us from the IPO Annual Meeting (#IPOAM15). I hope that your time in Chicago was enjoyable and that you will add us to your RSS feeds or bookmark the blog and return often. For those who were unable to attend, the Tuesday panel titled “Post Grant Proceedings at the USPTO” offered a wide-ranging, lively discussion of the current state of post-grant proceedings and proposed solutions to perceived weaknesses in the current system.
Continue Reading IPO Annual Meeting Panel Spars Over Fairness of Current IPR System