Inter Partes Review

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In MPHJ Technology Investments, LLC v. Ricoh Americas Corp., Appeal 2016-1243 (Fed. Cir. Feb. 13, 2017), the Federal Circuit affirmed the PTAB’s final written decision canceling all eight claims in U.S. Patent No. 8,488,173. The patent issued from an application that was the tenth continuation-in-part of a 20-year-old application that relies for priority on seven provisional applications. The decision may be noteworthy if only because it highlights how seemingly-minor changes to these applications over time influenced the PTAB’s interpretation of certain claim terms—an interpretation that finally led the PTAB and court to conclude the claims were not patentable, just as the patent is about to expire.
Continue Reading Claims Construed and Canceled as Patent Nears its Expiration Date

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In IPR2015-01157, 10X Genomics, Inc. challenged claims 1-31 of USPN 8,889,083 owned by the University of Chicago.  PTAB instituted trial on grounds of obviousness over two references.  Each party relied on the testimony of one or more experts, and the Patent Owner challenged expert testimony as exceeding the proper scope of Petitioner’s Reply.

The technology at issue involved a device and method for pressurized transport of fluidic plugs, or droplets, in microfluidic systems used in chemical and biochemical reactions.  The plug form of transport arises by injecting fluid containing reagents and a fluorinated surfactant into an immiscible fluorinated carrier fluid flowing in non-fluorinated microchannels of a microfluidic system. 
Continue Reading Don’t Switch Horses Midstream

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 final written decision. Despite the correct claim construction, the court vacated the decision and remanded the case to the PTAB for reconsideration of the merits of its decision on obviousness.

Apple filed an IPR petition challenging claims of Personal Web’s patent directed to methods of locating data and controlling access to the data by giving a data file a substantially unique name that depends on the file’s content. In determining that the challenged claims were unpatentable for obviousness, the PTAB construed the claim term “content-based identifier” and related terms, applying the BRI standard.
Continue Reading What Claim Construction Standard Applies If a Patent Expires During IPR Appeal?

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 that only some claims of Immersion Corporation’s U.S. Patent No. 8,659,571 were challengeable by Apple Inc. in an IPR because the ‘571 patent failed to disclose sufficient structure corresponding to the “drive module limitation” recited in claim 12 to determine the scope and meaning of claim 12.  Apple Inc., v. Immersion Corporation, IPR2016-01372, Paper 7 (January 11, 2017).
Continue Reading PTAB Declines to Institute IPR on Immersion’s Indefinite Means Plus Function Claims

Work in progressOnce a trial has been instituted at the PTAB, a party seeking consideration of supplemental evidence may file a motion in accordance with the following requirements: (1) the request for the authorization to file a motion to submit supplemental information must be made within one month of the date the trial was instituted; and (2) the supplemental information must be relevant to a claim for which the trial was instituted.  37 C.F.R. § 42.123(a). Mere satisfaction of these requirements for filing a motion may not, however, be sufficient to convince the PTAB to grant the motion. Instead, in deciding the motion, the PTAB will use its broad discretion to determine if the proffered supplemental evidence will assist the PTAB in “ensur[ing] efficient administration of the Office and the ability of the Office to complete [trial] proceedings in a timely manner.” See Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 445 (Fed. Cir. 2015), and our discussions here and here.
Continue Reading Your Supplemental Evidence is Timely, but is it Relevant to a Claim at Issue? PTAB Will Decide.

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In Phigenix, Inc. v. ImmunoGen, Inc., No. 2016-1544 (Fed. Cir. Jan. 9, 2017), the Federal Circuit dismissed, for lack of standing under Article III of the Constitution, a petitioner-appellant’s (Phigenix) appeal of a PTAB final written decision that refused to cancel claims challenged in an IPR. The court’s decision demonstrates that statutory right of appeal from a PTAB final written decision in an inter partes review does not necessarily establish Article III standing for the appeal.
Continue Reading Federal Circuit Dismisses Appeal where IPR Petitioner Lacked Standing to Appeal

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 motion to amend claims. The court determined that any errors in claim construction were harmless, and that substantial evidence supported the PTAB’s findings of anticipation.
Continue Reading Federal Circuit Upholds Cancellation of Micrografx Patent Claims for Anticipation

Diploma IconThe Patent and Trial Appeal Board dismissed petitions for inter partes review challenging the claims of a patent owned by a state university that had neither waived the protections offered it by the Eleventh Amendment nor consented to the trial.  Covidien LP v. University of Florida Research Foundation Inc., IPR2016-01274, -01275, -01276 (PTAB Jan. 25, 2017).  Covidien LP filed three IPR petitions seeking review of U.S. Patent No. 7,062,251, which is owned by the University of Florida Research Foundation, Inc. (UFRF).  In response, UFRF filed a motion to dismiss these petitions on the basis that UFRF is immune from being brought before the Board to adjudicate Covidien’s petitions.  In dismissing the petitions, the Board applied Supreme Court and Federal Circuit precedent to determine that USRF is an arm of the State of Florida and is thus entitled to invoke sovereign immunity to bar institution of an IPR. 
Continue Reading Sovereign Immunity Protects State University Owned Patent from Inter Partes Review

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The saga of Enfish v. Microsoft continues.  The Enfish litigation provides a textbook example of the multi-pronged defense now common with the advent of post-grant review and the evolving law concerning unpatentable subject matter.  Many are no doubt aware of the significant Federal Circuit decision on patentable subject matter (i.e. Section 101) which this litigation spawned.  Less familiar are the parallel developments in the PTAB.  Most recently, the Federal Circuit affirmed the PTAB’s determination that some, but not all, of the claims of the asserted patents were invalid in light of prior art.  Microsoft Corp.v. Enfish, LLC, No. 2015-1734 (Fed. Cir. Nov. 30, 2016) (non-precedential).
Continue Reading One Fish, Two Fish, Red Fish, Enfish: Unraveling the Maze of Parallel Court/PTAB Proceedings

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Recently, the Federal District Court for the District of New Jersey allowed Purdue Pharma to assert invalidity arguments in the litigation that were previously submitted in an IPR petition, but upon which IPR review was not instituted. See Depomed Inc. v Purdue Pharma LP, Civil Action 13-571, Order (D.N.J. Nov. 4, 2016). The Court rejected the patent owner’s arguments that Section 315(e) of Title 35 estopped Purdue from raising these argument.
Continue Reading Purdue Not Estopped From Raising Invalidity Contentions at Trial That Were Submitted But Not Instituted During IPR

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.