Tag Archives: Claim Construction

PTAB Upholds Claims Under Narrowed BRI Construction on Remand

The PTAB’s recent decision on remand in Corning Optical Comm. v. PPC Broadband (IPR2013-00342, Paper No. 57), and the related decision on appeal (815 F.3d 747 (Fed. Cir. 2016)), serve as a reminder that the broadest reasonable interpretation (BRI) standard does not permit an unreasonably broad construction. In addition, the PTAB’s related order (see Paper … Continue Reading

Ignore Occam’s Razor at your Peril

In IPR 2015-01127, PAR Pharmaceuticals, challenged claims 1-11 of USPN 8,404,215 owned by Horizon Therapeutics, LLC on grounds of obviousness over various combinations of six references.  Lupin Ltd. and Lupin Pharmaceuticals, Inc. filed another challenge to the claims of the ‘215 patent on the same grounds using the same arguments and evidence as used by … Continue Reading

No Written Description, No Problem when Prosecution History Disclaimer is Applied

The Patent and Trial Appeal Board invoked the doctrine of prosecution history disclaimer to construe the claims at issue narrowly for the inter partes review of U.S. Patent No. 5,884,033; and thus, concluding that the claims had not been shown to be unpatentable in light of prior art. The Board rejected the Petitioner’s additional arguments … Continue Reading

Federal Circuit Suggest Expansive Interpretation of “Adapted to” in Affirming CBM Cancellation

In a recent non-precedential decision, the Federal Circuit suggested a very expansive interpretation for the oft-used phrase “adapted to.” Relying upon the prosecution history, the Federal Circuit determined that the Board correctly construed claims relating to interactive video programming, and on that basis affirmed the Board’s decision that the claims were anticipated by a prior … Continue Reading

Federal Circuit Reaffirms that Phillips applies when Patent has expired

It is well accepted that the broadest reasonable interpretation (BRI) standard, which the PTO employs during patent examination, and not the Phillips standard applied in district court proceedings, is generally the proper standard to be used when interpreting claims in Post-Grant proceedings such as IPRs and reexamination proceedings.  However, in In Re CSB-System International, Inc., … Continue Reading

“Providing . . . information” Step Given No Patentable Weight

The PTAB recently addressed the limits on strategies to patent drug labeling, canceling claims directed to a method of supplying a pharmaceutical product where the method includes a step of providing certain “information” to the medical provider. According to the PTAB, the claimed step of providing the information is entitled to no patentable weight under … Continue Reading

Federal Circuit Confirms Prevailing Party Cannot Appeal to Correct PTAB’s Claim Construction

The prevailing party in a PTAB proceeding cannot appeal the claim construction used. In SkyHawke Tech. LLC v. Deca Int’l Corp., Appeal Nos. 2016-1325 and 2016-1326, Patent Owner SkyHawke prevailed in an inter partes reexamination filed by Deca challenging claims of SkyHawke’s U.S. Patent No. 7,118,498.  Unsatisfied with the PTAB’s claim construction used in reaching that … Continue Reading

“It’s a Bird, It’s a Plane, NO it’s a Granted Motion to Amend.”

We previously reported the May 9, 2016, Patent Office’s study that the PTAB rarely grants motions to amend.  There, we explained that patent owners rarely file motions to amend and, even when such motions are filed, the PTAB rarely grants such motions. Last week, in Google Inc. and Apple Inc., v. ContentGuard Holdings, Inc., Case … Continue Reading

An Overview of Amendments to the PTAB Rules

On June 30, 2016, lead APJ Jacqueline Wright Bonilla provided an overview of the new PTAB rules during the Biotechnology/Chemical/Pharmaceutical Customer Partnership (BCP) Conference.  The final rule on Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, which we have previously discussed [April 21, 2016 and August 20, 2015] … Continue Reading

PTAB Grants Motion to Amend Claims

In IPR2015-00208, Shinn Fu petitioned for IPR of USPN 6,681,897 owned by Tire Hanger.  All five claims of the patent were drawn to methods of supporting vehicle wheels removed from a vehicle while on a service lift, wherein the supports would allow technicians to remove and replace the wheels without risking back injury by bending.  … Continue Reading

Groundhog Day . . . Again: Observations on the Oral Argument in Cuozzo Speed Technologies, LLC v. Lee

The much anticipated argument in Cuozzo Speed Technologies, LLC v. Lee occurred Monday, April 25, 2016 before the United States Supreme Court.  One can glean some insight from the Justices’ questions and remarks, but the ultimate outcome in this seminal decision remains uncertain.  The following reflects the tenor of the remarks of seven of the … Continue Reading

Federal Circuit Gives a Geometry Lesson when Correcting the PTAB’s Claim Construction

In Pride Mobility Prods. Corp. v. Permobil, Inc., the Federal Circuit partially affirmed the PTAB’s decision cancelling claims in two Pride Mobility Products wheelchair patents.  Disagreeing with the Board’s conclusions as to one of the canceled claims, the Federal Circuit concluded that the Board’s claim construction of “substantially planar” and “oriented perpendicular” did not make … Continue Reading

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

PTAB Drops the Hammer on Petitioners: Five IPR Petitions Denied on the Same Day

The Patent Trial and Appeal Board (PTAB) is granting inter partes review (IPR) petitions at a 70% clip.  Imagine the surprise, then, when on a single day, September 16, 2015, petitioners went an incredible 0 for 5—the PTAB denied five petitions for IPR and granted none!  It seemed like a statistical improbability.  Maybe a signal … 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

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

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

PTAB Denies Institution in Cepheid v. Roche: PCR Primers Found Not Inherently Anticipated

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) … Continue Reading

Federal Circuit Upholds PTAB’s Application of its Rules to Decide Motions to Amend

Update: Overruled in part byAqua Products, Inc. v. Matal. 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 … Continue Reading
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