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The Supreme Court Finds IPR Proceedings Constitutional

Inter partes review (IPR) is a procedure that allows a party to challenge the validity of an issued patent based on prior art patents or printed publications. IPRs first became available in 2013 following passage of the Leahy-Smith America Invents Act. Some have questioned whether this post-grant review of patent validity is constitutional. Today, the … Continue Reading

Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims

On April 24, 2018, the Supreme Court issued its decision in SAS Institute, Inc. v. ComplementSoft, LLC, holding that if the Patent Office institutes an inter partes review (IPR) proceeding, it must issue a final written decision with respect to the patentability of every patent claim challenged by the petitioner. The Court reversed the Federal … Continue Reading

Is the PTAB Bound by a Prior Federal Circuit Claim Construction?

In Knowles Electronics LLC v. Cirrus Logic, Inc., No. 2016-2010 (Fed. Cir. Mar. 1, 2018), the Federal Circuit affirmed a PTAB decision that upheld an examiner’s rejection of claims for anticipation in an inter partes reexamination (IPX). The same claims had earlier been challenged, and determined to be not invalid (over different prior art), in … Continue Reading

Precedential and Informative Board Decision on Serial IPR Petitions

Serial IPR petitions directed to previously-challenged patents account for many of the petitions filed with the PTAB; however, 35 U.S.C. § 325(d) provides the Board with discretion to reject petitions where the same, or substantially the same, prior art or arguments have already been presented to the USPTO.  The Board recently designated as precedential part … Continue Reading

CAFC Hears IPR Appeal From Parties That Were Time-Barred From Filing Petition

Research Corporation Technologies, Inc. (RCT) sued Mylan Pharmaceuticals, Inc. (Mylan), Breckenridge Pharmaceutical, Inc. (Breckinridge), and Alembic Pharmaceuticals Ltd. (Alembic), in federal district court, accusing them of infringing United States Reissued Patent No. RE38,551. The patent claims pharmaceutical compositions useful in the treatment of epilepsy and other central nervous system disorders. Within one year of being … Continue Reading

The United States Can Have Standing in AIA Proceedings

PTABWatch Takeaway: When “sued for infringement” within the meaning of 28 U.S.C. § 1498(a), the United States has standing to petition the Patent Office to institute Covered Business Method (CBM) review.  Return Mail v. U.S. Postal Service, Appeal 2016-1502 (Fed. Cir. Aug. 28, 2017) Background Patentee, Return Mail, Inc., filed suit in the U.S. Court … Continue Reading

Federal Circuit Again Reminds PTAB that BRI Must Be Reasonable

Last fall, the Federal Circuit reversed a PTAB decision that affirmed an Examiner’s rejection of various claims in an ex parte reexamination because the Examiner’s interpretation of the claims, which the PTAB upheld, was unreasonably broad. In re Smith International, Inc., Appeal No. 2016-2303 (Fed. Cir. Sept. 26, 2017). The court’s decision is noteworthy because … Continue Reading

PTAB Should Have Considered Argument Raised in “Redundant,” Non-instituted Ground

In CRFD Research Ltd. v. Matal, No. 2016-2198 (Fed. Cir. Dec. 5, 2017), the Federal Circuit determined that the PTAB erred in its obviousness analysis, in part by failing to consider an argument the IPR petitioner made in a ground that the PTAB determined was “redundant” to the instituted grounds. Petitioner Hulu, LLC, challenged claims … Continue Reading

CAFC: PTAB Abused Its Discretion When It Refused to Admit Expert’s Trial Testimony

In Ultratec, Inc. v. CaptionCall, LLC, No. 2016-1706 (Fed. Cir. Aug. 28, 2017), the Federal Circuit vacated and remanded multiple IPR decisions where the PTAB failed to consider material evidence and failed to explain its decisions to exclude the evidence. Ultratec and CaptionCall are currently litigating in both district court and before the PTAB.  Ultratec … Continue Reading

Board Issues Guidance on Motions to Amend in View of Aqua Products

The PTAB’s Chief Administrative Patent Judge issued a memorandum on November 21, 2017, providing guidance on motions to amend in view of the en banc decision of the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (discussed here and here).  The court in Aqua Products determined that the Board could … Continue Reading

Eli Lilly’s Pemetrexed Therapy Claims Survive Challenge At PTAB

The Federal Circuit’s decision in Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., 845 F.3d 1357 (Fed. Cir. 2017) attracted much attention for applying the theory of divided infringement in the context of pharmaceutical therapeutic regimen claims.  Before the Federal Circuit decision, a scrum of petitioners successfully petitioned for IPR of the Lilly patent, … Continue Reading

Cases to Watch

Pending Supreme Court Decisions An updated discussion of this issue is available here: The Supreme Court Finds IPR Proceedings Constitutional The Supreme Court will decide during its October 2017 term “Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing … Continue Reading

Error in Claim Construction Leads to Reversal of IPR Decision and Cancelation of Claims

Two recent Federal Circuit decisions illustrate how an error in construing claims may lead the court to reverse a PTAB final written decision. In Organik Kimya AS v. Rohm & Haas Co., the Federal Circuit determined that the PTAB correctly construed the disputed claim term, “swelling agent,” and therefore affirmed the PTAB’s decisions upholding the … Continue Reading

Petitioners Will Pay More for Immensely Popular AIA Trials

In the November 14, 2017, Federal Register, the Patent Office issued its final rule setting and adjusting the fees the Office charges for its products and services, including relatively substantial increases for standard AIA trial fees (as shown below). As a simple example, a petitioner challenging all claims of a patent containing 30 claims will … Continue Reading

Patent Agent Privilege Recognized in Final Rulemaking Issued by USPTO

On November 7, 2017, the USPTO issued a Final Rule recognizing that communications between U.S. and foreign patent practitioners and their clients that are reasonably necessary and incident to the scope of the patent practitioners’ authority shall receive the same protections of privilege under Federal Law as if the communication were between a client and … Continue Reading

Board Decision Grants Motion to Amend With Respect to One Substitute Claim and Denies Motion to Amend With Respect to Other Substitute Claim

The Board’s recent decision in Veeam Software Corp. v. Veritas Technologies, LLC, Case No. IPR2014-00090 (PTAB July 17, 2017), provides patent practitioners with a framework for analyzing proposed substitute claims.  The Board’s decision, granting patent owner’s motion to amend in part, should be considered in conjunction with the Federal Circuit’s decision in Veritas Technologies LLC … Continue Reading

PTAB says 58% of Patents Survive Post-grant Proceedings Unchanged

On October 24, 2017, the PTAB held its inaugural “Chat with the Chief” webinar. The main topic of the webinar was to discuss multiple petitions filed against the same patent. The PTAB sought to address concerns that have been raised by patent owners that challengers just keep filing petitions until something sticks, and that petitioners … Continue Reading

Federal Circuit Overturns PTAB’s Finding of Patent Validity

In a split opinion in Homeland Housewares, LLC v. Whirlpool Corporation, the Federal Circuit has again overturned a final written decision issued by the PTAB determining that challenged claims in an IPR were not unpatentable, a development that should at least cast doubt on the validity of patents that survive challenges at the PTAB. Homeland … Continue Reading

Fractured Federal Circuit Reallocates Burden of Proof in AIA Trials

An eleven-judge en banc panel of the Federal Circuit issued its long awaited decision in Aqua Products, Inc. v. Matal, Appeal 2015-1777, on October 4, 2017, vacating and remanding the IPR final decision for the PTAB to determine whether the patent owner’s proposed amended claims are patentable. The court’s decision includes five separate opinions, though … Continue Reading

Petitioner Made Rebuttal Argument in Reply, Not an Improper New Argument

PTAB rules prohibit raising new arguments in a reply brief, but it can be difficult to distinguish between an improper reply argument and a proper rebuttal. In Idemitsu Kosan Co. v. SFC Co., No. 2016-2721 (Fed. Cir. Sept. 15, 2017), the Federal Circuit determined that the IPR petitioner properly made a rebuttal argument—not a belated, … Continue Reading

Interim Director Matal Expresses High Confidence in Constitutionality of AIA Trials

An updated discussion of this issue is available here: The Supreme Court Finds IPR Proceedings Constitutional Joe Matal, interim director of the Patent Office, addressed the IPO’s 45th Annual Meeting on September 19, 2017, in San Francisco. He said that the Office, and particularly the PTAB, experienced a productive yet tumultuous five years since the … Continue Reading

Late Payment of Petition Fee Thwarts IPR

If a Petitioner does not timely file the required petition fee, an IPR will not be instituted. In Cultec, Inc. v. Stormtech LLC  [Case No. IPR2017-00526, Paper 14 (July 17, 2017)], consistent with earlier decisions, the Board denied institution of an IPR because the Petitioner, Cultec, Inc., did not pay the required filing fee until … Continue Reading

How to Overcome a Section 112 ¶ 6 Means-Plus-Function Presumption

PTABWatch Takeaway: Claims that recite the term “means” may trigger the means-plus-function presumption under pre-AIA 35 U.S.C. § 112 ¶ 6 (Section 112(f) of the AIA), but the presumption can be overcome where: (1) the means term itself recites structure; (2) that structure is “common parlance” to those of ordinary skill in the art; and … Continue Reading
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