The AIA explicitly bestows the USPTO Director with the authority to institute IPRs and the PTAB with the authority to decide the ultimate question of patent validity. The Director delegated the authority to institute IPRs to the Board, but is it proper to assign the decision to the same APJs that render a final decision? A split panel at the Federal Circuit held that neither the AIA nor the Constitution precludes the same PTAB panel from rendering both institution and final decisions. Ethicon Endo-Surgery, Inc. v. Coviden LP, No. 2014-1771 (Fed. Cir. 2016).
Continue Reading Federal Circuit Affirms PTAB Panel’s Authority to Institute IPRs and Issue Final Decision
Court Reviews Use of Broadest Reasonable Construction 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 are likely girding for a tectonic shift in IPR proceedings. For those beleaguered by litigation from non-practicing entities, they may be justified in fearing that coveted IPR proceedings will become less useful as a bulwark against such cases.
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PTAB Warns Again That Prosecution Declarations Without Depositions May Be Given Little or No Weight
If you rely in an IPR on a declaration submitted during prosecution, the PTAB may give it little or no weight if your opponent cannot cross-examine the declarant.
In Praxair Distribution, Inc. v. INO Therapeutics LLC, the PTAB instituted inter partes review of U.S. Patent No. 8,846,112, directed to methods of providing nitric oxide gas for treating newborn children suffering from hypoxia.
In response, the Patent Owner relied not only on a supporting expert declaration, but also on three declarations submitted during prosecution of the ’112 patent.
Continue Reading PTAB Warns Again That Prosecution Declarations Without Depositions May Be Given Little or No Weight
Secondary Considerations Error Does Not Warrant Reversal
As we’ve previously reported, patent owners have had little success arguing secondary considerations of non-obviousness during inter partes review. Underscoring the challenge that patent owners face, the Federal Circuit recently affirmed a PTAB obviousness determination despite finding that it had erred in its consideration of the patent owner’s evidence regarding objective indicia of non-obviousness.
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PTAB Confronts Issues Raised By IPR Remand From Federal Circuit
In issuing a second final decision in Microsoft Corp. v. Proxyconn Inc., IPR2012-00026/ IPR2013-00109, Paper No. 80 (Dec. 9, 2015), the PTAB dealt with a “what do we do now,” both procedurally and substantively, after its initial final decision was reversed in part and remanded “for further proceedings” by the Federal Circuit in an opinion available at 789 F.3d 1292 (Fed. Cir. 2015). The Federal Circuit’s partial reversal and remand stemmed from its conclusion that the PTAB, in its initial final decision, construed two claim terms too broadly and employed that misconstruction in finding claims of the patent at issue invalid. Our prior discussion of the Federal Circuit decision is at this link.
Continue Reading PTAB Confronts Issues Raised By IPR Remand From Federal Circuit
Federal Circuit: Patent Owners Must Consider Prior Art from Prosecution History in Motion to Amend
Update: Overruled in part by Aqua Products, Inc. v. Matal. In a subsequent order, the court vacated the portions of the panel’s and the PTAB’s decisions concerning the patent owner’s motion to amend, and remanded the case to the PTAB for proceedings consistent with the Aqua Products decision.
In December 4, 2015, the Federal Circuit affirmed in a split opinion the Board’s final written decision in ScentAir Techs., Inc. v. Prolitec, Inc., IPR2013-00179, finding that the two claims of Prolitec’s U.S. Patent No. 7,712,683 (“’683 patent”) were unpatentable and denying Prolitec’s motion to amend. Although several issues were addressed by the Board and Federal Circuit, perhaps of most interest is the court’s conclusion that the Board properly denied Prolitec’s motion to amend because Prolitic did not demonstrate patentability of the substitute claim over prior art of record during prosecution of the patent.
Continue Reading Federal Circuit: Patent Owners Must Consider Prior Art from Prosecution History in Motion to Amend
Federal Circuit Reverses PTAB Decision Based on Incorrect Construction of “Is”
In the first full reversal of a PTAB IPR decision, the Federal Circuit reversed the PTAB’s ruling in Straight Path IP Group, Inc. v. Sipnet EU S.R.O, on the basis that the PTAB incorrectly construed the claim term “is,” in claims directed to a computer program for online communications.
Continue Reading Federal Circuit Reverses PTAB Decision Based on Incorrect Construction of “Is”
CAFC Confirms Constitutionality of Inter Partes Review
The Federal Circuit rejected a patentee’s appeal arguing that inter partes review is unconstitutional for violating Article III and the Seventh Amendment right to a jury trial. MCM Portfolio LLC v. Hewlett-Packard Co., No. 2015-1091 (Fed. Cir. December 2, 2015). The precedential decision affirms the PTAB’s authority to adjudicate the validity of issued patents.
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Federal Circuit Weighs in on Use of Evidence Cited in a Reply
In a decision last week, the Federal Circuit remanded for further consideration the Board’s final written decision concluding that the challenged claims of Verinata Health, Inc.’s U.S. Patent No. 8,318,430 were not obvious. See Ariosa Diagnostics v. Verinata Health,Inc., Case No. 2015-1215, 2015-1226 (Fed. Cir. Nov. 16, 2015). The Board’s conclusion was based, in part, on its decision to accord no weight to an aspect of declaration testimony the Petitioner (Ariosa) offered in support of its reply brief.
Continue Reading Federal Circuit Weighs in on Use of Evidence Cited in a Reply
Federal Circuit Tells Patent Owners That They Can’t Get It If They Don’t Ask For It
If you’re a patent owner faced with an expert declaration submitted by an IPR petitioner on reply, try to respond, and in multiple ways. Don’t just complain that the declaration should be excluded. This was the Federal Circuit’s recent message in Belden Inc. v. Berk-Tek LLC.
Continue Reading Federal Circuit Tells Patent Owners That They Can’t Get It If They Don’t Ask For It