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PTAB Updates and Expands the Director Review Process and Offers Transparency in Ex Parte Appeals

By Sandip H. Patel on Posted in Ex Parte, Institution / Denial, Inter Partes Review, IPR, Post Grant Review, Reexamination, Trial Procedures, Uncategorized
After the Supreme Court’s decision in United States v. Arthrex, Inc., the Patent Office implemented an interim process for the Director to review Patent Trial and Appeal Board decisions in AIA trials. The Office sought public feedback on the process last year (link) and received more than 4,000 responses (link)! The process has yet to … Continue Reading

Patent Office Proposes Increasing AIA Trial Fees

By Sandip H. Patel on Posted in Inter Partes Review, IPR, Post Grant Review
The Patent Office’s Director recently notified the Patent Public Advisory Committee (PPAC) of the Office’s intent to set or adjust several fees that patent applicants, patent owners, and those challenging patents in AIA trials must pay. For applicants, this includes fee increases for filing applications and tiered fees for filing terminal disclaimers. This also includes … Continue Reading

PTAB Invalidates GUI, but Leaves Obviousness Test Gooey

By Jeremy R. Kriegel on Posted in Obviousness, Post Grant Review, Sections 102/103
On February 9, 2023 the PTAB issued a Final Written Decision in Early Warning Services, LLC and Samsung Electronics Co., Ltd. v. WePay Global Payments LLC, determining the design claim of US D930,702 (“D’702”) unpatentable, as both anticipated and obvious based on a single reference, Reddy, US 2018/0260806 A1 (“Reddy”). See Consolidated PGR2022-00031 and PGR2022-00045, … Continue Reading

No Weight for Unsupported Expert Witness Testimony

By Sandip H. Patel on Posted in Inter Partes Review, Post Grant Review, Trial Procedures
In early February 2023, the Patent Office’s Director designated as precedential the Patent Trial and Appeal Board’s decision in Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022). In this decision, the Board denied a petition seeking inter partes review. The petitioner asserted the challenged patent claims were obvious over printed publication … Continue Reading

Supreme Court to Review the Arthrex Decision

By Sandip H. Patel on Posted in Appeals, CBM, Covered Business Method, Inter Partes Review, IPR, Post Grant Review
The Supreme Court issued an order on October 13, 2020, granting and consolidating three certiorari petitions seeking review of the Federal Circuit’s judgment in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), reh’g denied, 953 F.3d 760 (Fed. Cir. 2020). We discussed the Federal Circuit’s judgment here and its decision … Continue Reading

The Arthrex Mulligan

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Stays, Trial Procedures
The Federal Circuit, in Arthrex, concluded that the Patent and Trial Appeal Board’s Administrative Patent Judges were unconstitutionally appointed “principal” officers. The court therefore vacated the Board’s decision that canceled claims in an inter partes review and remanded so a new panel of APJs would re-decide the patentability of the claims. What happens, however, when … Continue Reading

A Fine Mess

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
Update (Apr. 3, 2020): The Federal Circuit recently denied rehearing petitions in the Polaris appeals referenced below (see link and link), and also denied the PTO’s request to stay the mandate in the Arthrex appeal (see link). The Federal Circuit recently issued an order denying multiple rehearing petitions in Arthrex Inc. v. Smith & Nephew, … Continue Reading

Fixing an Appointments Clause Violation

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
In Arthrex Inc. v. Smith & Nephew, Inc., Appeal 2018-2140 (Fed. Cir. Oct. 31, 2019), the Federal Circuit concluded that the PTAB’s Administrative Patent Judges (APJs) are “principal” officers and their appointment by the Secretary of Commerce therefore violates the Constitution’s Appointments Clause. The issue arose in an appeal of a decision by a panel … Continue Reading

The Chaos of Too Many Rules

By Sandip H. Patel on Posted in Post Grant Review, Trial Procedures
The Patent Office issued Honeywell a patent that required correction. The patent, according to Honeywell, did not include the proper claim for the benefit of priority to the filing date of an application that Honeywell had earlier filed. But before Honeywell noticed the error and tried to correct that priority claim, its competitor, Arkema, petitioned … Continue Reading

Trial Practice Guide Updates and Future Fee Increases

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
Today’s Federal Register includes a notice that the Patent Office updated its August 2012 Trial Practice Guide. The Federal Circuit recently noted that the Practice Guide “is a thoughtful and useful resource to which individual Board members and the public might turn for guidance,” but “is not binding on Board panel members.” Application in Internet … Continue Reading

PTAB Issues First Biotech/Pharma PGR Final Written Decision Based On Written Description Challenge

By Heather R. Kissling on Posted in Post Grant Review, Section 112
The Patent Trial and Appeal Board has received 37 petitions for post grant review of patents issuing from examination conducted by the Patent Office’s Group Art Unit 1600. The Board has issued four final written decisions thus far.  We discussed the first final written decision here, where all claims were upheld in the face of … Continue Reading

IPR and Estoppel after SAS Institute

By Julianne M. Hartzell on Posted in Estoppel, Inter Partes Review, Post Grant Review, Trial Procedures
The Supreme Court held on April 24, 2018 that if the Patent Office institutes and 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. SAS Institute, Inc. v. Iancu, (discussed in greater detail here). Within days, the Patent Office … Continue Reading

Patent Office Proposes to Jettison BRI in AIA Trials

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, Post Grant Review, Trial Procedures
The Patent Office today issued a press release of its notice of proposed rulemaking that would replace the broadest reasonable interpretation standard the Patent Trial and Appeal Board applies to construe unexpired patent claims and proposed substitute (amended) claims in AIA trial proceedings with the Phillips standard applied in patent cases before federal district courts … Continue Reading

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

By Sandip H. Patel and Michael R. Weiner on Posted in Covered Business Method, Estoppel, Institution / Denial, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
On April 24, 2018, the Supreme Court issued its decision in SAS Institute, Inc. v. Iancu, 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 Circuit’s … Continue Reading

Petitioners Will Pay More for Immensely Popular AIA Trials

By Sandip H. Patel on Posted in Inter Partes Review, IPR, Post Grant Review
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

By Jennifer Burnette on Posted in Discovery, Inter Partes Review, IPR, Post Grant Review
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

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

By Julianne M. Hartzell on Posted in CBM, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
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

Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings

By Sharon M. Sintich, Ph.D. on Posted in Amendments, Appeals, Discovery, Estoppel, Institution / Denial, Inter Partes Review, IPR, Legislation, Post Grant Review, Real Party-in-Interest, Stays, Trial Procedures
The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate.  The Act is an updated version of the STRONG Patents Act of 2015 that stalled in Congress.  Like its predecessor, the STRONGER Patents Act is designed to significantly modify the AIA trial … Continue Reading

Pending Bill Would Deliver More Judicial Scrutiny to USPTO and FDA Rules

By Michael Muczynski on Posted in Claim Construction, Institution / Denial, Inter Partes Review, Legislation, Post Grant Review
 The House of Representatives recently sent to the Senate its bill (H.R.5) that combines six previous regulatory reform bills, including, as Title II of the bill, the “Separation of Powers Restoration Act.”  Section 202 of the bill effectively removes the option for courts to apply Chevron deference to agency rulemaking and interpretations.  Thus, rather than deciding … Continue Reading

PTAB Issues First Biotech/Pharma Post-Grant Review Final Written Decision – All Claims Survive

By Heather R. Kissling on Posted in Post Grant Review, Sections 102/103
The first final written decision in a post-grant review of a patent arising from Art Unit 1600 issued November 14, 2016, in Altaire Pharm. Inc.. v. Paragon Bioteck, Inc., PGR2015-00011.  PGRs allow challenge based on enablement, written description, indefiniteness, and subject matter eligibility, in addition to the novelty and obviousness bases available in IPRs, permitting … Continue Reading

PTAB Should Have Canceled All Challenged Claims in CBM Reviews

By Lynn L. Janulis, Ph.D. on Posted in Appeals, Claim Construction, Covered Business Method, Post Grant Review, Section 101
In Apple, Inc. v. Ameranth, Inc. (Fed. Cir. 2016), the Federal Circuit reviewed the final written decisions in CBM reviews of three related patents owned by Ameranth, Inc., directed to computerized systems for generating and displaying menus for use in the restaurant industry.  The court determined that the PTAB properly construed all disputed claim terms, … Continue Reading
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