NRT Technology Corporation was not successful in petitioning the PTAB to institute CBM review of U.S. Patent No. 6,081,792, but was successful in moving a district court to dismiss an infringement action concerning the same patent on the basis that the patent claims ineligible (abstract) subject matter. Global Cash Access, Inc. v. NRT Tech. Corp., Case No. 2:15-cv-00822 (D. Nev. Mar. 25, 2016) (Order) (granting motion to dismiss). The apparently inconsistent PTAB and district court dispositions will no doubt encourage accused-infringers/putative-petitioners who do not succeed in initiating AIA (trial) review under a low evidentiary burden to try to invalidate the patent in district court under a higher evidentiary standard. Further, these decisions collectively demonstrate how a PTAB’s institution decision denying AIA review can be, without an appeal, effectively nullified by a parallel or later court proceeding.
Continue Reading No Appellate Review, No Matter: District Court Invalidates Patent After the PTAB Denies CBM Review
Failure To Identify The Difference Makes A Difference
There have been a few short articles floating around over the past few years that list the top (usually four or five) mistakes that petitioners have made to doom their IPR/CBM petitions. These articles sometimes refer to the need for the petitioner to pay attention to detail, but then often fail to go into detail about what those details might be.
Continue Reading Failure To Identify The Difference Makes A Difference
District Court Interprets IPR Estoppel Provision to Permit Reliance
In what appears to be the first district court case to address the issue directly, Judge Lefkow of the United States District Court for the Northern District of Illinois held that 35 U.S.C. § 315(e)(2) estoppel does not preclude parties from raising grounds in a civil litigation that were cumulative of grounds that could have been asserted during that party’s prior IPR proceeding, so long as the grounds are based on prior art that was not reasonably available during the IPR.
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A Second Bite at the Apple? Kyle Bass’s CFAD is Awarded IPR Institution of Follow-on Petitions
Remember when the PTAB denied institution of two IPR petitions filed by Kyle Bass’s Coalition for Affordable Drugs V LLC’s (CFAD) against Acorda Therapeutics, Inc. (Acorda)? Well, if at first you don’t succeed, try citing different prior art!
Continue Reading A Second Bite at the Apple? Kyle Bass’s CFAD is Awarded IPR Institution of Follow-on Petitions
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., March 10, 2016). This decision is one of several recent decisions in which the Federal Circuit has taken the opportunity to reinterpret the PTAB’s broadest “reasonable” interpretation of the claims during a post grant proceeding and change the interpretation to be more “reasonable” in light of the specification and actual claim language.
Continue Reading Another “Reasonable” Re-Interpretation by the Federal Circuit
Called Third Strike, Is the PTO Director Out? Federal Circuit Rejects
The Federal Circuit has rejected for the third time efforts by the Director of the PTO to preclude appellate review of whether challenged patent claims were properly deemed “covered business methods,” and thereby subject to CBM review. Previously, in Versata Development Group, Inc. v. SAP America, Inc., the Federal Circuit concluded that its jurisdiction to hear appeals of the PTAB’s final written decisions empowered it to examine if challenged claims qualified for CBM review (we reported here). In doing so, the Federal Circuit rejected contrary arguments of the Director who intervened on appeal.
Continue Reading Called Third Strike, Is the PTO Director Out? Federal Circuit Rejects
PTAB Revises Claim Construction in Final Written Decision, But Still Finds Claims Invalid
On January 11, 2016, the PTAB issued a final written decision in ABS Global, Inc. et al. v. XY, LLC, IPR2014-01161, holding claims 1 and 3 of U.S Patent No. 7,195,920 invalid for obviousness. The IPR is part of a long-running dispute between the parties involving multiple issues and multiple patents, as reported previously.
Continue Reading PTAB Revises Claim Construction in Final Written Decision, But Still Finds Claims Invalid
When Might a Request for Rehearing of Final Decision Be Worthwhile?
In an earlier blog post from last June, we were unable to find any successful Requests for Rehearing or Reconsideration of a Final Written Decision and concluded that, in most instances, such requests are generally a waste of resources. However, while the PTAB has continued to deny the vast majority of motions for rehearing of a final written decision, it has now granted a few. Those limited number of successful rehearing requests demonstrate that, where you can point to something specific that the Board has overlooked, a request for rehearing may be worthwhile. However, where the Board merely disagrees with your argument, don’t bother.
Continue Reading When Might a Request for Rehearing of Final Decision Be Worthwhile?
House of Cards: Weak Evidentiary Support Dooms IPR of Med Device Patent
On February 9, 2016, in C.R. Bard, Inc. v. Medical Components, Inc., IPR2015-01660, the PTAB refused to institute an IPR against US Patent No. 8,257,325, “Venous Access Port with Molded and/or Radiopaque Indicia.” The challenged claims were directed to a venous access port assembly with a marking to indicate the port is rated for power injection of a contrast fluid, which marking is visible by X-ray examination when the port is implanted.
Continue Reading House of Cards: Weak Evidentiary Support Dooms IPR of Med Device Patent
Federal Circuit Provides Further Guidance on Administrative Procedures For Motions to Amend Claims
Update: Overruled in part by Aqua Products, Inc. v. Matal.
In Nike, Inc. v. Adidas AG, Case No. 2014-1719 (Fed. Cir. Feb. 11, 2016) (appeal of IPR2013-00067), the Federal Circuit provided further guidance on the PTAB’s administrative procedures regarding motions to amend claims. After considering Nike’s argument that 35 U.S.C. § 316(e) places the burden of proving unpatentability on the petitioner in an IPR, the court reaffirmed its decision in Microsoft v. Proxyconn that the Patent Office has appropriately placed the burden on the patent owner to show patentability of substitute claims.
Continue Reading Federal Circuit Provides Further Guidance on Administrative Procedures For Motions to Amend Claims