Posts Tagged: "PTAB"

Today, the U.S. Court of Appeals for the Federal Circuit issued a ruling in American Science and Engineering, Inc. v. Stewart vacating a final written decision by the Patent Trial and Appeal Board (PTAB) that invalidated several of American Science and Engineering’s (AS&E) patent claims covering inspection systems using pencil-beam radiation sources. The appellate court faulted the PTAB for not properly articulating how the asserted prior art’s scatter detectors can detect radiation from the claimed pencil-beam configuration.

In the latest development on U.S. Patent and Trademark Office (USPTO) Director Coke Morgan Stewart’s “settled expectations” doctrine, Stewart today denied iRhythm Technologies, Inc.’s request for Director Review of her own decision to discretionarily deny institution of iRhythm’s petitions for inter partes review challenging a number of patents owned by Welch Allyn, Inc.

I invited McNish to join us for a conversation about PTAB practice and how it has evolved over the last several months, and to specifically discuss one of the more intriguing criteria being used by the USPTO to discretionarily deny institution of IPR challenges—the settled expectations of the patent owner. And, according to McNish, “by all appearances, ‘settled expectations’ decisions are converging toward a bright-line rule warranting discretionary denial starting six years after issuance, which would track the Acting Director’s previous analogy to the six-year damages lookback in the Dabico decision.”

In the latest slew of Director Discretionary Denial decisions issued last week by the U.S. Patent and Trademark Office (USPTO), Acting USPTO Director Coke Morgan Stewart largely delivered wins for patent owners, denying or partially denying institution on dozens of inter partes review (IPR) petitions. In one representative case, Stewart extended her increasingly important “settled expectations” doctrine to a patent that has been in force for only six years.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Tuesday affirmed a district court’s finding that Netflix, Inc. had proven the challenged claims of CA, Inc.’s patent for distributed computing technology obvious. The opinion was authored by U.S. District Judge Jennifer Hall of the U.S. District Court for the District of Delaware, sitting by designation.

Xerox today lost an appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC) against Snap, Inc., Meta and X Corp over the Patent Trial and Appeal Board’s (PTAB’s) invalidation of Xerox’s patent on techniques for content delivery. Xerox’s U.S. Patent No. 8,489,599 is titled “Context and Activity-Driven Content Delivery and Interaction” and is directed to “techniques and systems for creating and presenting content based on contextual information.” Snap, Meta and X each filed inter partes review (IPR) petitions challenging claims of the patent based on different prior art. The PTAB instituted all of the petitions and then consolidated them and issued one final written decision determining that the petitioners had collectively established unpatentability.

Today, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in IGT v. Zynga Inc. affirming the Patent Trial and Appeal Board’s (PTAB) final written decision invalidating IGT’s patent claims to secured networks in gaming environments. The Federal Circuit found interference estoppel arguments raised by IGT to be directed to the PTAB’s unreviewable institution decision, and further held that the PTAB’s estoppel determination involved no “shenanigans” that could make the institution decision reviewable under Cuozzo Speed Technologies v. Lee (2016).

Following a number of amicus briefs filed last week in a case challenging the U.S. Patent and Trademark Office’s (USPTO’s) recission of former Director Kathi Vidal’s guidance on discretionary denial, two more amici have now weighed in supporting the Office. SAP filed a petition for a writ of mandamus with the U.S. Court of Appeals for the Federal Circuit (CAFC) in June seeking to compel the USPTO “to apply its June 21, 2022, ‘binding agency guidance’ to SAP’s petitions, and all still-active petitions filed before February 28, 2025, and to not pressure SAP or any IPR petitioner into forfeiting in parallel district court litigation an invalidity ground it could not have reasonably asserted in their IPR petition.”

Several amici have weighed in this week on a petition challenging the U.S. Patent and Trademark Office’s (USPTO’s) recission of former USPTO Director Kathi Vidal’s guidance on discretionary denial—and retroactive application of the new, interim guidance—which SAP America, Inc. argues violated its right to due process. SAP filed a petition for a writ of mandamus with the U.S. Court of Appeals for the Federal Circuit (CAFC) in June seeking to compel the USPTO “to apply its June 21, 2022, ‘binding agency guidance’ to SAP’s petitions, and all still-active petitions filed before February 28, 2025, and to not pressure SAP or any IPR petitioner into forfeiting in parallel district court litigation an invalidity ground it could not have reasonably asserted in their IPR petition.”

On Monday, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Shockwave Medical, Inc. v. Cardiovascular Systems, Inc. dismissing cardiovascular health company Shockwave Medical’s appeal arguing that the Patent Trial and Appeal Board (PTAB) erroneously relied on applicant admitted prior art (AAPA) in finding its patent claims obvious. The Federal Circuit found the PTAB’s ruling consistent with its own case law on AAPA, which provided general background knowledge for a person of ordinary skill in the art without serving as the sole basis for the PTAB’s obviousness finding.

On Thursday, July 3, iRhythm Technologies, Inc. filed a petition for Director Review of Acting Director Coke Morgan Stewart’s June 6 Director Discretionary Denial decision denying institution of five inter partes reviews (IPR) it brought against Welch Allyn, Inc., claiming Stewart’s decision has “unsettled the IP community.” In the June 6 decision, Stewart denied institution of five IPRs brought by iRhythm against Welch Allyn, finding that, while several factors weighed against denial, the failure of the petitioner to challenge the patent sooner and the “settled expectations” of the patent owner superseded those factors.

We have written before about the Patent Trial and Appeal Board’s (PTAB’s) 70% all-claims invalidation rate. That article explained (using numbers from the PTAB statistics page) that when a patent is subjected to an IPR, the all-claims invalidation rate is 70%. The all-claims invalidation rate is the rate at which the PTAB finds all challenged claims invalid (unpatentable), effectively killing off the patent. The all-claims invalidation rate is not just high; it has also varied considerably over the years, which raises additional concerns.

At first glance, certain comments by U.S. Patent and Trademark Office (USPTO) Director nominee John Squires during his Senate Judiciary Committee confirmation hearing raised questions about whether he sees the Patent Trial and Appeal Board (PTAB) in the same way as Acting Director Coke Morgan Stewart. But on closer examination, and when viewed in context, Squires’s comments could reflect alignment not only with Acting Director Stewart, but with Congress’s objective when it passed the Leahy-Smith America Invents Act (AIA) — that patent quality be vetted as early as possible, during or shortly after examination, and that later, back-end challenges only be available in limited circumstances.

On Monday, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential ruling in Eye Therapies, LLC v. Slayback Pharma, LLC, vacating an obviousness ruling by the Patent Trial and Appeal Board (PTAB) that invalidated Eye Therapies’ patent claims to methods of treating eye redness. Reviewing the relevant patent prosecution history at the U.S. Patent and Trademark Office (USPTO), the Federal Circuit found that the Board’s validity ruling was ultimately infected by an erroneous construction of the transitional phrase “consisting essentially of” in light of intrinsic evidence supporting a narrow interpretation for that disputed claim term.

The Patent Trial and Appeal Board (PTAB) on Thursday designated as informative a Director Review decision in which Acting Director Coke Morgan Stewart said the Board abused its discretion by instituting two petitions for inter partes review (IPR) challenging the same claims. According to the U.S. Patent and Trademark Office (USPTO), informative decisions provide the Board “norms on recurring issues, guidance on issues of first impression to the Board, guidance on Board rules and practices, and guidance on issues that may develop through analysis of recurring issues in many cases .”