Claim Construction

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In Apple, Inc. v. Ameranth, Inc. (Fed. Cir. 2016), the Federal Circuit reviewed the final written decisions in CBM reviews of three related patents owned by Ameranth, Inc., directed to computerized systems for generating and displaying menus for use in the restaurant industry.  The court determined that the PTAB properly construed all disputed claim terms, determined that the patents are CBM patents, and determined that most challenged claims were unpatentable under § 101, but that the PTAB erred in concluding that some dependent claims were not unpatentable under § 101.

More specifically, the claims in the disputed Ameranth patents are directed to a “first menu that has categories and items, and software that can generate a second menu from the first menu by allowing categories and items to be selected.” 
Continue Reading PTAB Should Have Canceled All Challenged Claims in CBM Reviews

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An updated discussion of this issue is available here: Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims

The Federal Circuit recently denied a petition for rehearing en banc, effectively reiterating that the PTAB may, in its sole discretion, choose to institute an IPR proceeding on some, but not all, of the patent claims challenged in an IPR petition.  The rehearing petition sought the full court’s review of a split three-judge panel decision in SAS Institute, Inc. v. Complementsoft, LLC, Nos. 2015-1346, -1347 (Fed. Cir. Jun. 10, 2016), that applied Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016), to conclude that there is no statutory requirement that a PTAB final written decision address every claim raised in an IPR petition.
Continue Reading PTAB May Institute an IPR Proceeding on a Subset of Challenged Claims

In IPR2015-01191, American MegaTrends and four other petitioners challenged claims 1-9, 11, 12 and 15 of USPN 6,892,304 owned by Kinglite Holdings, Inc. on grounds of obviousness over three technical documents, supplemented by a fourth document for the challenge to claim 6.  The parties also indicated that they were involved in 11 other IPR petitions and two district court proceedings.

The technology disclosed and claimed in the ‘304 patent involved methods of encrypting instructions to the Basic Input-Output System (BIOS) of a computer operating system using a private-public key pair.
Continue Reading It Isn’t Printed Publication Art Unless It’s Publicly Accessible

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In Schoeller Bleckmann Oilfield v. Churchill Drilling Tools U.S., No. 2016-1494 (Fed. Cir. November 9, 2016) (non-prec.), the court affirmed the Board’s IPR decision of unpatentability of claims directed to oil-drilling equipment.  The court refused to construe the challenged claims as limited to a disclosed embodiment, rejecting the patentee’s argument that the claim term “ball-like” was given an implicit definition in the specification.
Continue Reading Federal Circuit Affirms Board’s Decision Cancelling Claims for Oil Drilling Equipment Based on Broad Claim Construction

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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 55), denying the parties’ requests for further briefing on remand, indicates that, when the Federal Circuit bases its claim construction on a party’s construction advanced during an earlier proceeding before the PTAB, the PTAB may choose to base its remand decision on the arguments and evidence in the record, without need for further briefing.
Continue Reading PTAB Upholds Claims Under Narrowed BRI Construction on Remand

Woman Upset Hitting Forehead with her HandIn 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 PAR.  The Board joined the two proceedings and construed the claims-at-issue in accordance with the plain meaning of the recited terms, crediting the unrebutted testimony of Petitioners’ expert in holding the claims unpatentably obvious under 35 U.S.C. § 103(a) over various combinations of the cited art.
Continue Reading Ignore Occam’s Razor at your Peril

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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 that the claims as construed were not adequately described in the specification. The Board noted that it was not proper for it to consider whether the claims as construed were valid under 35 U.S.C. §112, first paragraph.
Continue Reading No Written Description, No Problem when Prosecution History Disclaimer is Applied

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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 art reference. Intertainer, Inc. v. Hulu, LLC, No. 2015-2065 (Fed. Cir. Sept. 26, 2016) (non-precedential).Continue Reading Federal Circuit Suggest Expansive Interpretation of “Adapted to” in Affirming CBM Cancellation

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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., Appeal No. 2015-1832, the Federal Circuit reminded the PTAB that the BRI standard is not to be applied in all Post-Grant proceedings.  Instead, the Federal Circuit reaffirmed its precedent that “when an expired patent is subject to reexamination, the traditional Phillips construction standard attaches.” (p. 8). The court further held that the Phillips standard also applies when the patent expires during reexamination.
Continue Reading Federal Circuit Reaffirms that Phillips applies when Patent has expired

Pills flowing out of a bottle of prescription medicine with information of their possible serious side effects.

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 the “printed matter” doctrine where it is not functionally related to other elements of the claimed method.  Specifically, even if the claim says that the information is “sufficient to” cause some effect (e.g., for a medical provider to avoid treating a patient) there is no functional relationship with the claim if the claim doesn’t recite that effect.   Praxair Distribution Inc. v. Mallinckrodt Hospital Prods. IP Ltd., IPR2015-00529.
Continue Reading “Providing . . . information” Step Given No Patentable Weight

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.