The PTAB denied a Petitioner’s request for authorization to file a motion to terminate an IPR without a final written decision, made only two months after the Board issued a decision instituting the IPR. Masterimage 3D, Inc. v. Reald Inc., Case IPR2015-00035, Paper No. 30 (June 25, 2015).

After institution of an IPR but before the Patent Owner had filed a response, the Petitioner Masterimage 3D, Inc. sought permission to request adverse judgment and termination of the IPR, to avoid the estoppel effects of a final written decision. The Patent Owner opposed this request, on the basis that it desires the Petitioner to be bound by estoppel effects of a final written decision under 35 U.S.C. § 315(e); and because the Patent Owner may file a motion to amend in the proceeding.
Continue Reading PTAB Denies Petitioner’s Request to Terminate IPR Two Months After Institution Decision

Although parties continue to file Requests for Rehearing of the PTAB’s Final Written Decision, none have yet succeeded in changing the outcome. According to Docket Navigator (www.docketnavigator.com), to date, 19 motions for rehearing of the Final Written Decision have been filed. Only one, in McLinton Energy Group, LLC v. Magnum Oil Tools International, Ltd., IPR 2013-00231, has been granted. Unfortunately for the patent owner in that case, although the request for rehearing was granted and the Board agreed to reconsider its Final Decision, it ultimately declined to make any modification.
Continue Reading Will Anyone Succeed on a Request for Rehearing of a Final Written Decision?

Prior tBinary Tunnelo the Federal Circuit’s opinion in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), software and Internet patents seemed on a relentless march towards ineligibility.  The Federal Circuit’s decision in DDR Holdings tapped the brakes on this skid towards elimination, and suggested that claims to the implementation of long established economic practices on computers might survive where those claims focused on overcoming obstacles in the implementing technologies themselves. 
Continue Reading Digital Rights Patent Declared Patent Eligible Under DDR Holdings

Last Tuesday, for the first time ever, the Federal Circuit reversed the PTAB in an IPR decision by, among other things, ratcheting back the “broadest reasonable construction” standard for claim construction by declaring the PTAB’s construction “unreasonable.”  Idea LightbulbThe Court said that, “[e]ven under the broadest reasonable interpretation, the board’s construction ‘cannot be divorced from the specification and the record evidence,’ and ‘must be consistent with the one that those skilled in the art would reach.’”  Microsoft v. Proxyconn, 2014-1542, -1543 (Fed. Cir. June 16, 2015) (“A construction that is ‘unreasonably broad’ and which does not ‘reasonably reflect the plain language and disclosure will not pass muster’”) (internal citations omitted).
Continue Reading Footnote on Claim Amendment More Interesting than Federal Circuit Holding?

On June 19, 2015 the District Court for the Middle District of Florida denied Defendants’ motion in limine requesting the exclusion of evidence relating to a denial of an IPR institution from the Patent Trial and Appeal Board (Stoneeagle Services, Inc. v. Pay-Plus Solutions, Inc. et al, 8-13-cv-02240 (FL MD)).  This decision contradicts recent decisions in other jurisdictions in which the results of IPR decisions have not been allowed in District Court actions (see Interdigital Commc’ns, Inc. v. Nokia Corp., No. 13-10-RGA,2014 WL 8104167 (D. Del. Sept. 19, 2014) and Ultratec, Inc. et al. v. Sorenson Communications, Inc., No. 3:13-CV-00346 (W.D. Wisc. Oct. 8, 2014 ).
Continue Reading Evidence of Denial of IPR Institution Allowed in District Court Infringement Action

Failure to provide a detailed explanation of the relevance of prior art disclosures may foreclose any possibility of institution of IPR.  Data ChartA petition for IPR must align the evidence and arguments with the various limitations of the challenged claims. See 37 C.F.R. § 42.22(a)(2) (the “petition . . . must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.” 
Continue Reading Claim Charts Are Not Enough – Petitioners Must Clearly Explain Relevant Disclosures in Prior Art

Hour GlassDefendants in litigation seeking to take advantage of IPR must file a petition within one year of the date of service of the complaint alleging patent infringement.  Defendants may be tempted to delay filing the IPR petition to avoid revealing strategy early in the litigation proceeding.  Delaying the filing, however, may risk the granting of a stay of the related litigation, as highlighted by four district court decisions¹ issued last week.
Continue Reading Recent Decisions Denying Stay of Litigation Highlight Importance of IPR Petition Timing

On June 11, 2015, the PTAB denied institution of Cepheid’s petition seeking inter partes review of Patent No. 5,643,723 directed to methods of detecting tuberculosis in humans (IPR2015-00255). To defeat institution, the patent owner successfully used its preliminary response to persuade the Board to (a) narrowly construe claim terms (despite the broadest-reasonable-construction standard), and (b) reject inherent anticipation and obviousness arguments offered by the petitioner’s expert witness.
Continue Reading PTAB Denies Institution in Cepheid v. Roche: PCR Primers Found Not Inherently Anticipated

Empty vintage congress hall with seats and microphones.The House of Representative’s Innovation Act, H.R. 9, was voted to the House floor for further consideration on June 11, by a 24-8 vote of its Judiciary Committee, after the Senate’s PATENT Act, S. 1137, was voted to the Senate floor on June 4 by a 16-4 vote of its Judiciary Committee.  See prior entry, “PTAB Review Reform in Bill Approved by Senate Committee.” Both bills target abusive litigation tactics and post-grant proceedings, IPRs and PGRs.

Notably, amendments were introduced to H.R. 9 to prevent the types of IPRs filed by Kyle Bass-type hedge funds for monetary gain, and to permit the patent owner to support its preliminary response with new declaration evidence.
Continue Reading Patent Dispute Reform Legislation Is Now Pending in Both Houses of Congress

Update: Overruled in part byAqua Products, Inc. v. Matal.Pen shot on white background with high contrast cross process look

Earlier this week, we wrote about the post-hearing briefing the Federal Circuit invited in Microsoft Corp. v. Proxyconn, Inc., Case Nos. 2014-1542, -1543, Dkt. 49 (Fed. Cir. Apr. 13, 2015), and the questions it posed regarding the PTAB’s administration of inter partes review. The court issued its decision in that case yesterday, answering some of the questions it posed and, for the first time, reversed a PTAB claim construction, vacated the PTAB’s decision of unpatentability, and remanded the IPR for further proceedings.
Continue Reading Federal Circuit Upholds PTAB’s Application of its Rules to Decide Motions to Amend

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.