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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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An updated discussion of this issue is available here: Federal Circuit to Take AIA Time Bar Issue En Banc

Original Post: In a non-precedential decision late last year, the Federal Circuit dismissed a patent owner’s appeal of a Patent Trial and Appeal Board decision that refused to apply a statutory time-bar to deny institution of an inter partes review proceeding. Click-to-Call Technologies, LP v. Oracle Corp., 622 Fed. Appx. 907 (Fed. Cir. 2015) (per curiam). The court relied on the “No Appeal” provision in 35 USC § 314(d), which states that the “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”
Continue Reading Supreme Court Vacates Federal Circuit Decision that Refused to Review PTAB’s Application of the Time Bar to AIA Trials

Front facade of the US Supreme Court building in Washington DC. Words "EQUAL JUSTICE UNDER LAW" are clearly visible right above the columns. Vivid blue sky with clouds is in background.

In Cuozzo Speed Technologies, Inc., v. Lee, the Supreme Court affirmed the Federal Circuit’s decision, upholding the PTAB’s use of the BRI standard for claim interpretation in IPRs, and determining that 35 U.S.C. § 314(d) bars judicial review of the PTAB’s decision to institute review on grounds not specifically raised in the IPR petition.
Continue Reading Supreme Court Upholds Use of BRI Standard in Cuozzo

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The PTAB has continued the trend of pushing the -“antibody exception” to written description into an ever-smaller corner. Claims to methods of using antibodies that bind Siglec-15 to impair osteoclast differentiation and inhibit bone resorption were deprived of priority because the parent application failed to disclose the “antigenic regions useful for generating antibodies having the desired functional properties.” Consequently, the claims were anticipated by the cited reference under 35 U.S.C. §102(a), and Patentee’s other evidence of prior conception, diligence and reduction to practice was insufficient to antedate the reference. Daiichi Sankyo Co., Ltd. v. Alethia Biotherapeutics, Inc., IPR2015-00291 (Paper No. 75, June 14, 2016) (final written decision).
Continue Reading Squeezing the ‘Antibody Exception’ to Written Description into a Corner

The Board initially denied institution of Mylan Pharmaceuticals’ petition for inter partes review of U.S. Patent No. RE44,186, owned by AstraZeneca.  After a rare grant of Mylan’s request for rehearing, the Board reconsidered the record and decided to institute the IPR.  The decision to institute focused on the content of Mylan’s expert testimony; and although not mentioned in the decision, the replacement of one APJ in the PTAB panel for the decision on rehearing might have played a role in the grant of the request for rehearing and the decision to institute the IPR on rehearing even though both decisions were unanimous.
Continue Reading Rare Grant of Rehearing of Denial of Petition for Inter Partes Review

In a recent appeal from a PTAB final written decision, the Federal Circuit determined that a patentee was not denied notice or an opportunity to respond to references cited in the final written decision as representing the state of the art,  but that were not the basis for a grounds for institution.  (Genzyme Therapeutic Prods. Ltd. v BioMarin Pharm. Inc., Appeal Nos. 2015-1720, -1721 (Fed. Circ., June 14, 2016)).  The court concluded that there is no requirement, either in the PTAB’s regulations, in the Administrative Procedure Act (APA), or as a matter of due process, for the institution decision to anticipate and set forth every legal or factual issue that might arise during the trial, and that the PTAB acted properly in citing the additional references. 
Continue Reading Federal Circuit Confirms PTAB Can Cite Prior Art in IPR Final Decision That Was Not In Grounds Of Institution

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Notwithstanding the Federal Circuit’s Enfish warning that “we do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract,” in Informatica Corp. v. Protegrity Corp., the PTAB cancelled claims 1-8 and 18-53 of U.S. Patent No. 6,321,201 under Section 101 because the claims relating to a data security system for databases were directed at an abstract idea and recite ineligible subject matter.  Informatica Corp. v. Protegrity Corp., CBM2015-00021, Paper 38, (“Dec”) (PTAB May 31, 2016); Enfish, LLC v. Microsoft Corp., No. 2015-1244, Slip Op. at 11 (Fed. Cir. May 12, 2016). The Board also determined that some of these claims were also unpatentable under Section 103.  Focusing on the Board’s decision regarding Section 101, the Board held: (1) the ’201 patent was a covered business method patent, (2) Section 101 is a proper ground for review for covered business methods patents, and (3) the claims were directed at an abstract idea.
Continue Reading PTAB Concludes Database Patent Claims Are Ineligible under Section 101 Despite Enfish

Obstruct_Don't StopA judgment in an interference disposes of all issues that were, or by motion could have properly been, raised and decided. A losing party who could have properly moved for relief on an issue, but did not so move, may not take action in the Patent Office after the judgment that is inconsistent with that party’s failure to move. 37 C.F.R. § 41.127. This is known as “interference estoppel,” and was recently applied by the PTAB in partially denying an IPR petition. See Adama Makhteshim Ltd. v. Finchimica S.p.A., IPR2016-00577 (PTAB May 24, 2016) (order partially instituting IPR). The decision is important because it is a rare example of the PTAB’s consideration and application of interference estoppel to other Patent Office proceedings, including AIA trials.
Continue Reading PTAB Applies Interference Estoppel to Deny IPR Grounds

Gavel and a PulleyThe Federal Circuit recently vacated or reversed-in-part two PTAB final written decisions on the basis that the PTAB did not adequately describe its reasons for concluding the claimed invention is obvious.  In both instances, the court criticized the Board’s “broad, conclusory statements” regarding one of ordinary skill’s motivation to adjust prior art teachings.  These decisions highlight an attractive grounds for appealing a PTAB’s final written decision.
Continue Reading Federal Circuit to PTAB – Explain yourself!!

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An updated discussion of this issue is available here: Who Must Bear the Burden of Proof Regarding Patentability of Amended Claims?

The Federal Circuit confirmed in a precedential opinion that the burden to prove patentability of an amended claim in an IPR proceeding rests squarely with the patentee, and in deciding a motion to amend claims, the Board only need consider the arguments presented by the patentee, not perform a full reexamination of the proposed claims. In In re Aqua Products, Inc., Appeal No. 2015-1177 (Fed. Cir. May 25, 2016), the Federal Circuit affirmed the PTAB’s denial of patentee Aqua’s motion to substitute claims because Aqua failed to prove patentability of the substitute claims.  Aqua then appealed challenging the Board’s amendment process.
Continue Reading Board Need Not Consider Arguments Beyond Those Actually Raised By Patentee In Motion To Amend

No ExcusesInstitution was denied in two IPR proceedings on the grounds that the petitions were filed more than one year after petitioner was served with a complaint alleging patent infringement. The documents were electronically filed but proof of payment of filing fees were one minute and nine minutes late, respectively. Additionally service had not been completed before the midnight deadline.
Continue Reading The PTAB Has No Sympathy for the Last Minute Filer

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.