Should a Petitioner who failed to obtain institution be allowed to refile and try again? When the initial failure was in proof that a patent is a covered business method (CBM) patent, the Board allowed a second petition to proceed. After the Board initially denied institution (CBM2014-00084), Motorola Mobility successfully obtained institution of a new CBM petition directed to the same patent (CBM2015-00004) but containing a more extensive section addressing the CBM standard.
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PTAB Clarifies Meaning of Prior Art “Of Record” and “Known” In Context of a Motion to Amend – What Now?
In MasterImage 3D, Inc. v. RealD Inc., the Patent Trial and Appeal Board (PTAB) reaffirmed that the patent owner bears the burden of establishing the patentability of any amended claims proposed in an AIA trial over two categories of prior art: (a) the “prior art of record” and (b) “prior art known to the patent owner.” IPR2015-00040, Paper 42 (PTAB July 15, 2015). Nothing new there. What is new is the PTAB’s “clarification” of what constitutes such prior art:
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PTAB Grants Request for Rehearing on Decision to Institute
In a rare event, the PTAB recently changed one of its decisions denying institution of inter partes review of a claim. That change was prompted by the IPR-petitioner’s request for rehearing on the PTAB’s original institution decision in Apple Inc. et al. v. Memory Integrity, LLC, IPR2015-00163. Decision on Institution (Paper 18, “Orig. Dec.”); Request for Rehearing (Paper 20, “Req. Reh’g”); Decision on Request for Rehearing (Paper 22, “Dec.”). A search of Docket Navigator reveals that fewer than one in five such requests for rehearing are granted.
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Claim Charts Are Not Enough – Petitioners Must Clearly Explain Relevant Disclosures in Prior Art
Failure to provide a detailed explanation of the relevance of prior art disclosures may foreclose any possibility of institution of IPR. 
A petition for IPR must align the evidence and arguments with the various limitations of the challenged claims. See 37 C.F.R. § 42.22(a)(2) (the “petition . . . must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.”
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Federal Circuit Expected to Provide Guidance on PTAB Claim Amendment Procedures
Following oral argument in an appeal of an IPR in which the PTAB canceled a number of challenged claims and denied the Patent Owner’s motions to amend, the Federal Circuit requested additional briefing from the parties and the Director of the USPTO (Intervenor), concerning interpretation of the PTAB rule for filing motions to amend during an IPR, 37 CFR § 42.121. Microsoft Corp. v. Proxyconn, Inc., Case Nos. 2014-1542, -1543, Dkt. 49 (Fed. Cir. Apr. 13, 2015). The questions raised by the Federal Circuit panel suggest that the Court is likely to provide guidance on the PTAB’s claim amendment procedures when it issues its decision in the appeal.
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PTAB Relaxing its Application of Law Governing IPR Claim Amendments
As discussed yesterday, on June 5, 2015, for just the second time in IPR history, the Board granted a patent owner’s contested motion to amend claims. Reg Synthetic Fuels, LLC v. Neste Oil Oyj, IPR2014-00192 (PTAB June 5, 2015).¹ Are the facts of Neste really so different from the dozens of motions to amend the Board has previously denied, or has something changed?
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PTAB Allows Motion to Amend After it Rejects Original Patent Claims Directed to BioDiesel Fuel
On June 5, 2015, the Board issued a final written decision in Reg Synthetic Fuels Llc, V.Neste Oil Oyj, IPR2014-00192, rejecting all challenged claims of U.S. Patent No. 8,278,492, but confirming the patentability of substitute claims submitted by Patent Owner.
The ‘492 patent is directed to a process for the manufacture of biodiesel fuel comprised of hydrocarbons from bio oils and fats. The ’492 patent discloses a two-step process in which a feed stream of biological origin, diluted with a hydrocarbon, is first hydrodeoxygenated, and then isomerized. According to the ’492 patent, deoxygenation via hydrogenolysis requires a large amount of hydrogen, and releases a significant amount of heat that must be dissipated. To avoid these problems, the patented process “spikes” the feed stream with sulfur to favor the decarboxylation/decarbonylation reaction pathways.Continue Reading PTAB Allows Motion to Amend After it Rejects Original Patent Claims Directed to BioDiesel Fuel
Apple Argues to Federal Circuit a Stay of Litigation in Favor of CBM
In appealing the denial of its request that further litigation in the Eastern District of Texas be stayed in favor of recently instituted CBM review, Apple has urged the Federal Circuit to ignore the fact that trial had already occurred, and a jury verdict rendered, in the Texas action. In its appeal brief, Apple argues that it was unfairly denied a stay that was granted to other parties facing litigation on the same patents who have yet to proceed to trial.
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PTAB Upholds Claims Directed to Chemical Process Based on Expert Testimony and Experimental Evidence
On May 27, 2015, the Board issued a final written decision in Organik Kimya AS v. Rohm & Hass Co., IPR2014-00185, confirming the patentability of all challenged claims of U.S. Patent No. 6,020,435.
The ‘435 patent is directed to a chemical process for preparing low-density “hollow” or “voided” multi-stage emulsion polymers used in coating compositions such as paints. These emulsion polymers are generally prepared by swelling a core/shell emulsion polymer in such a way that one or more voids form in the interior of the emulsion polymer particle.
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Prior Art Must be Analogous to the Entire Scope of Problem
On May 26, 2015, the Board issued its final written decision in Schott Gemtron Corp. v. SSW, IPR2014-00367, confirming the patentability of all of the challenged claims of U.S. Patent No. 8,286,561 (“the ’561 patent”).¹ The Board concluded the prior art on which the petitioner, Schott Gemtron Corporation, relied was not analogous to the ’561 patent’s claimed invention and, more particularly, the art was not reasonably pertinent to all the problems the inventor faced.
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