Tag Archives: Broadest Reasonable Construction

Another “Reasonable” Re-Interpretation by the Federal Circuit

In a recent decision appealing the PTAB’s finding of claims unpatentable in two different, but related re-examination proceedings, the Federal Circuit vacated and remanded the Board’s decisions based on reinterpretation of claim terms construed under the PTAB’s broadest reasonable interpretation (BRI) standard during the re-examination process (In re Varma, Appeal 2015-1502 and 2015-1667, Fed. Circ., … Continue Reading

CAFC Puts the “Reasonable” Back in the BRI Standard

In a pair of decisions from related IPR appeals, the Federal Circuit reversed and remanded portions of two final written decisions related to the same patent and parties because the PTAB’s construction of the claims was unreasonably broad. See, PPC Broadband, Inc. v. Corning Optical Comm’ns, Appeal Nos. 2015-1361, et al. (Fed. Cir., Feb. 22, 2016); … Continue Reading

The Board’s Prerogative to Change its Mind May Doom Petition after Institution

In TriVascular, Inc. v. Samuels, Appeal No. 2015-1631 (Fed. Cir. Feb. 5, 2016), a unanimous Federal Circuit panel affirmed a PTAB final written decision that concluded the petitioner (TriVascular) did not meet its burden of demonstrating the challenged claims were unpatentable during inter partes review. TriVascular successfully petitioned the Board to institute the review after … Continue Reading

Supreme Court to Kill Golden Goose? Court Announces It Will Review Use of Broadest Reasonable Construction in IPR Proceedings

On January 15, 2016, the United States Supreme Court agreed to consider whether it is appropriate to give claims challenged in inter partes  review their “broadest reasonable construction.”  See Cuozzo Speed Tech., LLC v. Lee.  Given the Federal Circuit’s dismal recent track record when the Supreme Court has injected itself into disputed patent issues, practitioners … Continue Reading

Broader is Better for the Petitioner, but Inherency is Intrinsically Difficult

Two recent PTAB final written decisions highlight the benefits that the “broadest reasonable interpretation” standard for claim construction provides to Petitioners, as well as the difficulty Petitioners face in proving inherent anticipation.  The PTAB instituted two IPRs on the same patent: one on an anticipation ground, and another on an obviousness ground.  The Petitioner failed … Continue Reading

How I Learned to Stop Worrying and Love the Bomb: Response to IPO Panel on PTAB Proceedings

Recently, in the pages of this blog, we reported on the dire predictions made at the IPO Annual Meeting here in Chicago of the “end of days” for patents.  The purported culprits?  The PTAB and the America Invents Act’s newly enacted Inter Partes Review and Covered Business Method Review.  “Well, allow me to retort,” to … Continue Reading

IPO Annual Meeting Panel Spars Over Fairness of Current IPR System

Welcome to all of you who are new readers joining us from the IPO Annual Meeting (#IPOAM15). I hope that your time in Chicago was enjoyable and that you will add us to your RSS feeds or bookmark the blog and return often. For those who were unable to attend, the Tuesday panel titled “Post … Continue Reading

PTAB Denies Institution of Another Investment Fund IPR Petition, Refusing to Ignore Claim Limitation Under BRI Standard

Score another win for pharma against investment funds-turned-IPR petitioners. On September 21, 2015, the PTAB denied institution of Ferrum Ferro Capital, LLC’s (“FFC”) petition for IPR of an Allergan patent claim related to its Combigan® eye-drop product for treating glaucoma. This dispute has attracted publicity for having bled into the courts, where Allergan has sued … Continue Reading

AIA Rule Changes About Patent Owner Responses and Misconduct

On August 20, the USPTO published for comment in the Federal Register proposed changes to the rules governing PTAB trials. In general, the proposed amendments address the claim construction standard applied by the Board, evidence that may be included in the patent owner’s response, and a Rule 11-like misconduct standard for practitioners before the PTAB.… Continue Reading

PTAB Denies CBM Petition for Lack of Standing, Interpreting “Privies” as Customers and Not Suppliers

Acxiom Corp. v. Phoenix Licensing LLC (CBM2015-00068, Paper 23) presents a rare denial of a petition for covered business method review (as of June 25, 2015, CBM petitions are granted at a rate of over 70%).  In denying the petition,  the PTAB stressed that, to have standing, a petitioner must have been sued (or threatened … Continue Reading

Gamble At Your Own Risk – The Danger Of Petition Overkill

Boehringer Ingelheim filed the petition at issue in IPR2015-00417 concurrently with the petitions at issue in IPR2015-00415 and IPR2015-00418 to challenge patents protecting methodologies for treating rheumatoid arthritis (RA) with rituximab, an FDA-approved antibody for treating certain cancers.  The IPR2015-00417 petition specifically challenged the fourteen claims of U.S. Patent No. 7,976,838, which are drawn to … Continue Reading

Grinning Patentees Get A Mulligan

Filed concurrently with the petitions at issue in IPR2015-00417 and IPR2015-00418, Boehringer Ingelheim filed the petition at issue in IPR2015-00415 seeking review of U.S. Patent No. 7,820,161 owned by Genentech and Biogen Idec.  The Board’s institution decision steadily whittled down Boehringer’s varied attacks on the patent.  Ultimately, IPR was granted on 2 of the 36 … Continue Reading

BRI is Here to Stay: Federal Circuit Confirms Broadest Reasonable Interpretation Standard of Claim Construction for IPRs

A sharply divided Federal Circuit denied Cuozzo Speed Technology’s petition for rehearing en banc on the Broadest Reasonable Interpretation (BRI) standard used in Inter Partes Review (IPR).  Chief Judge Prost and Judges Newman, Moore, O’Malley, and Reyna voted for en banc review, but could not persuade Judges Lourie, Dyk, Wallach, Taranto, Chen, and Hughes to … Continue Reading

Footnote on Claim Amendment More Interesting than Federal Circuit Holding?

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.”  The Court said that, “[e]ven under the broadest reasonable interpretation, the board’s construction ‘cannot be divorced from the … Continue Reading
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