Trial Procedures

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In Rovalma, S. A. Böhler-Edelstahl GmbH & Co., No. 2016-2233 (Fed. Cir. May 11, 2017), the Federal Circuit vacated the PTAB’s final written decision and remanded the case for the PTAB to provide a further explanation for its determination that the challenged claims were obvious. According to the court, the PTAB’s decision lacked sufficient detail necessary for the court to determine if the PTAB’s findings were supported by substantial evidence, or if the PTAB provided the Patent Owner proper notice and opportunity to respond to the PTAB’s claim construction and theory of unpatentability.Continue Reading Owner of Hot-Work Steel Processing Patent Burned by Its Own IPR Evidence

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.

Form Over FunctionIs there a difference between saying that it would be intuitive to use the features of one prior art reference in combination with another, versus saying that such a combination merely uses a prior art element for its established function? According to two recent decisions, the Federal Circuit apparently thinks so.

In In re: Van Os, Case No. 2015-1975 (January 3, 2017), the Court reversed and remanded the Board’s finding of obviousness, rejecting the Board’s conclusion that the combination of prior art references would have been “intuitive.” The case concerned an appeal of the Board’s decision to sustain the patent examiner’s rejection of Apple’s U.S. Patent Application No. 12/364,470 directed to a touchscreen interface in a portable electronic device that allowed a user to rearrange icons on a display.
Continue Reading Intuitive to Use Versus Use of an Element for its Intended Purpose – Is There a Difference?

Business strategy businessman planning and finding a solution through a drawing of a labyrinth maze

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

"Gavel on copy of escrow agreement, soft shadow. White background, soft shadow. Gavel has seen much use. Please see more gavel photos:"An updated discussion of this issue is available here: PTAB’s Time Bar Determinations Are Reviewable by the Federal Circuit

As we had predicted in a previous post, the Federal Circuit, on January 4, 2017, granted patent owner Wi-Fi One LLC’s petitions for rehearing en banc regarding the interpretation of, and interplay between, 35 U.S.C. § 314(d) (the No Appeal provision) and § 315(b) (the Time Bar provision).  A few months ago, we wrote about the related decision Wi-Fi One, LLC v. Broadcom Corp., Appeal 2015-1944 (Fed. Cir. Sept. 16, 2016), which the court’s order vacates:

In Wi­Fi, the patent owner (Wi­Fi One, LLC) argued that the IPR petitioner (Broadcom Corporation) was in privity with entities accused (and eventually adjudged) in parallel district court litigation of infringing the challenged patent. Those entities, the patent owner argued, would have been time­barred from seeking IPR under 35 USC § 315(b).
Continue Reading Federal Circuit to take AIA Time Bar issue En Banc

Red seal and imprint "SANCTIONS" on white surface

On November 10, 2016, the Intellectual Property Owners Association (IPO) hosted a panel discussion entitled Ethics in AIA Post-Grant Proceedings at the PTAB with the Honorable Thomas Giannetti, Lead Administrative Patent Judge of the PTAB.

The main topic of the discussion was guidance on motions for sanctions.  The rules relating to trial practice before the PTAB allow the Board to impose an appropriate sanction on any attorney, registered practitioner or party that violates the PTAB’s rules after the offending party has had an opportunity to respond.  35 C.F.R. §42.11(d)(1).  The Board has the authority to sanction parties or a party may file a motion for the Board to impose sanctions. 
Continue Reading Guidance on Requesting Motions for Sanctions

"Gavel on copy of escrow agreement, soft shadow. White background, soft shadow. Gavel has seen much use. Please see more gavel photos:"

Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is closely related to its decision whether to institute inter partes review and is therefore rendered nonappealable by§314(d).”

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On January 19, 2018, the Federal Circuit issued an order vacating the decision discussed in the post below and reinstating the appeal for reconsideration in view of the court’s en banc decision in Wi-Fi One LLC v. Broadcom Corporation, which we discuss here. A new decision on the merits may be expected later in 2018.

Original Post: In Click-to-Call Techs. v. Oracle Corp., Appeal 15-1242 (Fed. Cir. Nov. 17, 2016) (non-prec.), on remand from the Supreme Court for further consideration in view of Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016) (as we discussed here), the Federal Circuit again dismissed the patent owner’s (Click-to-Call’s) appeal, concluding that the court lacks jurisdiction to review a decision by the PTAB to institute an Inter Partes Review (IPR) petition over a patent owner’s objections that the IPR petition is time barred.
Continue Reading Federal Circuit Dismisses Appeal Based on AIA Time Bar, But Two Judges Call for En Banc Review

Writing on the calendar.

A split panel of the Federal Circuit held that the PTAB applied a standard that was too exacting when it required an inventor to prove the “continuous exercise of reasonable diligence” to antedate a prior art reference. Rather, the PTAB should have applied the rule of reason to determine if the inventor proved that there was “reasonably continuous diligence.” Perfect Surgical Techniques v. Olympus America, Inc., Case No. 2015-2043, __ F.3d __ (Fed. Cir. Nov. 15, 2016). This clarified standard appears to ease the burden on a party seeking to prove diligence.
Continue Reading To Antedate, Must an Inventor Prove “Continuous Reasonable Diligence” or “Reasonably Continuous Diligence”?

Woman whispering to her friend

The Federal Circuit reversed, in part, a PTAB final written decision after determining that several emails, wrongly excluded as hearsay, showed the inventor’s conception prior to allegedly anticipating art.  In REG Synthetic Fuels, LLC v. Neste Oil Oyj,  No. 2015-1773 (Fed. Cir. Nov. 18, 2016), the Federal Circuit reversed the PTAB’s finding that a prior art reference anticipated the challenged claims directed to a certain paraffin composition.  The Federal Circuit determined that emails the PTAB wrongly excluded from evidence sufficiently established that the Patent Owner conceived the invention before the filing date of the prior art reference.
Continue Reading Federal Circuit Reverses PTAB’s Anticipation Decision: Proof of Prior Conception Improperly Excluded as Hearsay

A stamp on a white background that reads: Denied

The Supreme Court recently issued orders (Oct. 3 and Oct. 11) denying several petitions for certiorari challenging aspects of AIA trials. As we previously reported, two of those petitions challenged the constitutionality of AIA trials and the Patent Office’s authority to cancel patent rights between private parties. Cooper v. Lee, __ S.Ct. __, 2016 WL 361681 (Oct. 11, 2016); MCM Portfolio v. Hewlett-Packard Co., et al., __ S.Ct. __, 2016 WL 1724103 (Oct. 11, 2016). On the same day, the Court denied Merck’s petition challenging the Federal Circuit’s deferential standard of review of the PTAB’s AIA trial decisions. Merck & Cie, et al. v. Gnosis S.P.A. et al.,__S.Ct. __, 2016 WL 4014485 (Oct. 11, 2016). We covered the Federal Circuit decision at issue here.
Continue Reading Supreme Court Declines to Weigh in on AIA Issues

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.

Learn more

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.