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In May 2019, the PTAB designated precedential two IPR decisions related to its discretion to institute inter partes review.

In Valve Corp. v. Electronic Scripting Products, Inc., the Board denied institution under 35 U.S.C. § 314(a), applying the precedential General Plastic factors to deny institution of a follow-on petition.  See General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 17-18 (PTAB Sept. 6, 2017)(precedential) and our post about this case.  The Board determined that all the General Plastic factors weighed against institution.
Continue Reading PTAB Precedential Decisions on Discretion to Institute Inter Partes Review

In an unusual fact situation, Judge Andrews of the U.S. District Court for the District of Delaware held that estoppel stemming from a Final Written Decision of the PTAB could arise even if issued after trial where the court has not yet entered final judgment on the relevant ground. Novartis Pharmaceuticals Corp. v. Par Pharmaceutical Inc., Case No. 14cv1289 (D. Del. April 11, 2019).
Continue Reading Estoppel May Arise After Trial

The PTAB Bar Association’s Annual Conference in March included a panel of Administrative Patent Judges who offered commentary on best practices in ex parte appeals from original examination and reexaminations. The participating APJs were Lead Administrative Patent Judge Rae Lynn Guest and Administrative Patent Judge James T. Moore.
Continue Reading PTAB Judges Weigh in on Best Practices for Ex parte Appeals

In AC Technologies S.A. v. Amazon.com, the Federal Circuit confirmed the PTO’s interpretation of SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018) (discussed in greater detail here) requiring that the PTAB address each ground of invalidity raised in an instituted petition in its final written decision. 912 F.3d 1358 (Fed. Cir. 2019).
Continue Reading PTAB Must Consider All Grounds Raised in an Instituted Petition

Incorporation by reference is not sufficient to satisfy specific reference to each prior-filed patent application to be entitled to an earlier priority date (Droplets, Inc. v. E*Trade Bank (887 F.3d 1309 (2018)). This appeal to the Federal Circuit stems from a dispute between Droplets, Inc. and E*TRADE Bank, over a patent (U.S. Patent No. 8,402,115 (“the ’115 Patent”)) owned by Droplets. At issue is the effective filing date of Droplets’ ‘115 patent.
Continue Reading Have You Included Specific Reference to Every Document in Your Priority Claim?

Addressing the PTAB Bar Association Conference in its opening session, newly appointed Chief Judge Scott Boalick explained that his goal as Chief Judge is to bring stability to the board and increase predictability. He wants all parties coming to the Board to feel that they have gotten a fair shake and that the procedures are fair.
Continue Reading Newly Appointed Chief Judge Scott Boalick Addresses PTAB Bar Association

PTABWatch Takeaway: The United States Patent and Trademark Office (USPTO)’s 2019 Revised Patent Subject Matter Eligibility Guidance provides a useful, and effective, tool for demonstrating patent eligibility of software-related inventions. While the 2019 Guidance acts as persuasive authority only, the PTAB has relied on the 2019 Guidance as a rubric in numerous cases to analyze, and find patent eligible, software-related inventions. Practitioners and inventors seeking to overcome, or avoid, patent eligibility issues under Section 101 would do well to draft or amend claims in view of the 2019 Guidance.
Continue Reading How the PTAB Reviews Software Inventions Under the 2019 Revised Subject Matter Eligibility Guidance

The PTAB recently hosted a Boardside Chat webinar on the topic of hearsay and authentication before the Board. The Administrative Patent Judges that presented were Michael Zecher, Tom Giannetti and Grace Obermann. A PowerPoint of the presentation can be found here and the Boardside Chat schedule can be found here.
Continue Reading “Hearsay & Authentication” From the PTAB Judges’ Perspective

Federal Circuit Affirms Obviousness Decision by Board, Discusses Impact of Standing on Triggering of §315(b)’s Time Bar

In Hamilton Beach Brands, Inc. v. F’real Foods, LLC, Appeal No. IPR2016-01107 (Fed. Cir. Nov. 16, 2018), the Federal Circuit affirmed the Patent Trial and Appeal Board’s final written decision in an IPR upholding the patentability of a patent claim under 35 U.S.C. § 103. Additionally, the court discussed but did not determine whether improper standing at the time of filing a complaint might impact the application of the one-year time bar under 35 U.S.C. §315(b). The decision provides a good opportunity for practitioners to brush up on the fundamentals governing obviousness determinations and suggests that the case law surrounding the one-year time-bar under §315(c) may still evolve.
Continue Reading FC Affirms Obviousness Decision by Board Trigger of Time Bar

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.