In its seventh PGR institution, the PTAB recently decided for the first time that a patent asserting a pre-AIA effective filing date was eligible for post-grant review because it contained at least one claim that was only entitled to a post-AIA effective filing date. Although some claims were entitled to a pre-AIA effective filing date, PGR was instituted for all of the patent claims, on all five of the prior art grounds asserted by the petitioner.
Continue Reading One Post-AIA Claim Risks PGR For All Claims
PTAB Warns Again That Prosecution Declarations Without Depositions May Be Given Little or No Weight
If you rely in an IPR on a declaration submitted during prosecution, the PTAB may give it little or no weight if your opponent cannot cross-examine the declarant.
In Praxair Distribution, Inc. v. INO Therapeutics LLC, the PTAB instituted inter partes review of U.S. Patent No. 8,846,112, directed to methods of providing nitric oxide gas for treating newborn children suffering from hypoxia.
In response, the Patent Owner relied not only on a supporting expert declaration, but also on three declarations submitted during prosecution of the ’112 patent.
Continue Reading PTAB Warns Again That Prosecution Declarations Without Depositions May Be Given Little or No Weight
Secondary Considerations Error Does Not Warrant Reversal
As we’ve previously reported, patent owners have had little success arguing secondary considerations of non-obviousness during inter partes review. Underscoring the challenge that patent owners face, the Federal Circuit recently affirmed a PTAB obviousness determination despite finding that it had erred in its consideration of the patent owner’s evidence regarding objective indicia of non-obviousness.
Continue Reading Secondary Considerations Error Does Not Warrant Reversal
Dissent: “Deferential review by the Federal Circuit falls short”
In Merck & CIE v. Gnosis S.P.A., Gnosis Bioresearch S.A., Gnosis U.S.A. Inc., Case No. 2014-1779 (Fed. Cir. Dec. 17, 2015), the Federal Circuit affirmed the Board’s decision that the contested claims were invalid for obviousness, determining that the Board’s factual findings were supported by substantial evidence, and agreeing with the Board’s conclusion of obviousness. However, in dissent, Judge Newman asserted that the Federal Circuit’s substantial evidence standard of review for the Board’s factual findings in AIA trial decisions is not appropriate under the AIA, and that based on a review without deference, the Board’s decision in this case should be reversed.
Continue Reading Dissent: “Deferential review by the Federal Circuit falls short”
PTAB Confronts Issues Raised By IPR Remand From Federal Circuit
In issuing a second final decision in Microsoft Corp. v. Proxyconn Inc., IPR2012-00026/ IPR2013-00109, Paper No. 80 (Dec. 9, 2015), the PTAB dealt with a “what do we do now,” both procedurally and substantively, after its initial final decision was reversed in part and remanded “for further proceedings” by the Federal Circuit in an opinion available at 789 F.3d 1292 (Fed. Cir. 2015). The Federal Circuit’s partial reversal and remand stemmed from its conclusion that the PTAB, in its initial final decision, construed two claim terms too broadly and employed that misconstruction in finding claims of the patent at issue invalid. Our prior discussion of the Federal Circuit decision is at this link.
Continue Reading PTAB Confronts Issues Raised By IPR Remand From Federal Circuit
Federal Circuit Affirms PTAB’s Victory on Invalidity Ground the Petition Did Not Even Present
In SightSound Techs., LLC v. Apple Inc., Appeal Nos. 2015-1159, -1160 (Fed. Cir. Dec. 15, 2015), the Federal Circuit affirmed the PTAB’s final written decisions in two CBM patent review proceedings that canceled claims in SightSound’s patents as being obvious over prior art (referred to as the CompuSonics publications), even though Apple did not present that specific challenge in its petitions. The Federal Circuit’s decision is important because it shows that the court will not review a PTAB decision to institute an AIA trial on a ground the petitioner did not present.
Continue Reading Federal Circuit Affirms PTAB’s Victory on Invalidity Ground the Petition Did Not Even Present
Evidence From Prosecution and District Courts Not Excluded
Two recent PTAB final written decisions illustrate the difficulty in convincing the PTAB to grant a motion to exclude evidence, in particular on the grounds of relevance, more particularly for evidence submitted in support of a party’s claim construction position.
Continue Reading Evidence From Prosecution and District Courts Not Excluded
Federal Circuit: Patent Owners Must Consider Prior Art from Prosecution History in Motion to Amend
Update: Overruled in part by Aqua Products, Inc. v. Matal. In a subsequent order, the court vacated the portions of the panel’s and the PTAB’s decisions concerning the patent owner’s motion to amend, and remanded the case to the PTAB for proceedings consistent with the Aqua Products decision.
In December 4, 2015, the Federal Circuit affirmed in a split opinion the Board’s final written decision in ScentAir Techs., Inc. v. Prolitec, Inc., IPR2013-00179, finding that the two claims of Prolitec’s U.S. Patent No. 7,712,683 (“’683 patent”) were unpatentable and denying Prolitec’s motion to amend. Although several issues were addressed by the Board and Federal Circuit, perhaps of most interest is the court’s conclusion that the Board properly denied Prolitec’s motion to amend because Prolitic did not demonstrate patentability of the substitute claim over prior art of record during prosecution of the patent.
Continue Reading Federal Circuit: Patent Owners Must Consider Prior Art from Prosecution History in Motion to Amend
PTAB to Shakespeare: “ ‘What’s in a Name?’ Are you Kidding? Everything!”
Shakespeare’s Juliet famously observes, “What’s in a name? That which we call a rose by any other name would smell as sweet.” The PTAB begs to differ. While a generic computing device may not render abstract claims patentable, introduce it with a fancy nom de guerre and you have got yourself patentable subject matter.
Continue Reading PTAB to Shakespeare: “ ‘What’s in a Name?’ Are you Kidding? Everything!”
Institution Decisions are Nonappealable. Settled? Maybe Not Yet.
The ability to appeal the determination on institution of an IPR is expressly limited by statute. 35 U.S.C. § 314(d) states: “The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” An identically-phrased limitation is also applicable to PGR institution decisions at 35 U.S.C. § 324(e), and by extension, to CBMR institution decisions. On its face, this part of the post-grant proceedings schema seems clear and simple: PTAB institution decisions are not to be appealable.
Continue Reading Institution Decisions are Nonappealable. Settled? Maybe Not Yet.