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As discussed here, the en banc Federal Circuit vacated and remanded the PTAB’s decision in Aqua Products, Inc. v. Matal, determining that the PTAB erred in placing the burden of persuasion on the patent owner for proposed claim amendments. Four judges on the eleven-judge en banc panel dissented, and would have upheld the PTO’s rule, 37 C.F.R. § 42.42(c), that places the burden of persuasion on the moving party, and agreed with the PTO that this rule applies to patent owners who move to amend claims during an IPR.
Continue Reading Aqua Products Dissent Would Keep Burden for Amendments on Patent Owners

An eleven-judge en banc panel of the Federal Circuit issued its long awaited decision in Aqua Products, Inc. v. Matal, Appeal 2015-1777, on October 4, 2017, vacating and remanding the IPR final decision for the PTAB to determine whether the patent owner’s proposed amended claims are patentable. The court’s decision includes five separate opinions, though no majority opinion. The salient take-away, as Circuit Judge O’Malley’s opinion for a five-judge plurality concludes, is that “very little said over the course of the many pages that form the five opinions in this case has precedential weight.” 
Continue Reading Fractured Federal Circuit Reallocates Burden of Proof in AIA Trials

An updated discussion of this issue is available here: The Supreme Court Finds IPR Proceedings Constitutional

Joe Matal, interim director of the Patent Office, addressed the IPO’s 45th Annual Meeting on September 19, 2017, in San Francisco. He said that the Office, and particularly the PTAB, experienced a productive yet tumultuous five years since the passage of the AIA, and acknowledged that the Federal Circuit’s docket of appeals today is dominated by the PTAB’s decisions in AIA trials. He expressed high confidence that the Supreme Court will soon determine, unanimously, that these trials do not violate the Constitution even if they extinguish property rights through a non-Article III forum without a jury.
Continue Reading Interim Director Matal Expresses High Confidence in Constitutionality of AIA Trials

If a Petitioner does not timely file the required petition fee, an IPR will not be instituted. In Cultec, Inc. v. Stormtech LLC  [Case No. IPR2017-00526, Paper 14 (July 17, 2017)], consistent with earlier decisions, the Board denied institution of an IPR because the Petitioner, Cultec, Inc., did not pay the required filing fee until the day after filing its petition, which was one day after the statutory filing deadline under 35 U.S.C. § 315(b).
Continue Reading Late Payment of Petition Fee Thwarts IPR

PTABWatch Takeaway: Claims that recite the term “means” may trigger the means-plus-function presumption under pre-AIA 35 U.S.C. § 112 ¶ 6 (Section 112(f) of the AIA), but the presumption can be overcome where: (1) the means term itself recites structure; (2) that structure is “common parlance” to those of ordinary skill in the art; and (3) the claim does not recite any function for the means term to perform.

In Skky, Inv. v. MindGeek, SARL, Appeal 16-2018 (Fed. Cir. June 7, 2017), the Federal Circuit upheld the PTAB’s decision that the claim term “wireless device means” of U.S. Patent 7,548,875 (the “’875 patent”) was not a means-plus-function term pursuant to Section 112 ¶ 6.Continue Reading How to Overcome a Section 112 ¶ 6 Means-Plus-Function Presumption

In a routine AIA trial, the PTAB determined that challenged claims in a patent directed to HVAC systems were unpatentable as being obvious and anticipated by prior art. This trial was unusual, however, because the Board premised its anticipation conclusion on a joined IPR petition that successfully rectified evidentiary deficiencies in the same petitioner’s earlier IPR petition, which the Board granted only on obviousness grounds. The later IPR petition would have been time-barred but for the Board’s conclusion, according to an expanded panel of administrative patent judges (APJs), that the statutory joinder provision “permits joinder of issues, including new grounds of unpatentability, presented in the petition that accompanies the request for joinder.”
Continue Reading Adding Two More to the List of Serious Questions about AIA Trials

As previously discussed in our post covering the state of IPR estoppel, initial district court decisions have varied regarding the scope of IPR estoppel applied to ground for invalidity not raised in a petition, but that could have been raised. Two recent decisions may show a trend toward uniformity.

In Cobalt Boats, LLC v. Sea Ray Boars, Inc., Judge Morgan of the Eastern District of Virginia ruled on motions in limine, including a motion regarding the scope of IPR estoppel. Case no. 2:15cv00021 (E.D. Va. June 5, 2017).
Continue Reading Two More District Courts Apply IPR Estoppel to Grounds Not Raised In Petition

When a patent is co-owned by a state university and another party, an IPR may proceed against the remaining party even after the state university co-owner has been determined to have sovereign immunity from the proceeding.  Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., [Case No. IPR2017-00572, Paper 32 (July 13, 2017)]. This recent decision was the first to address a situation where a university owned a patent jointly with a company.  This decision follows two earlier cases, Covidien v. University of Florida , discussed here, and NeoChord, Inc. v. University of Maryland, Baltimore, [Case No. IPR2016-00208, Paper 28 (PTAB, May 23, 2017)], where the Board determined that sovereign immunity under the Eleventh Amendment as an “arm of the state” prevents an IPR from being instituted regarding patents owned by state universities.
Continue Reading IPR Challenge May Proceed Even in the Absence of Some Patent Owners

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 proceedings at the PTAB.  Enactment of this Act would severely diminish the usefulness of AIA proceedings. 
Continue Reading Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings

In three recent decisions, the Federal Circuit reiterated the importance of determining estoppel in PTAB proceedings on a claim-by-claim basis.

In the earlier related decisions, In re Affinity Labs of Texas, LLC [1] , 856 F.3d 883 (Fed. Cir. 2017) and In re Affinity Labs of Texas, LLC [2], 856 F.3d 902 (Fed. Cir. 2017), the court addressed the effects of a district court judgment and settlement of a district court litigation on pending pre-AIA reexamination proceedings.
Continue Reading Look to the Claims for Estoppel

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.