Posts Tagged: "PTAB"

Federal Circuit says PTAB decision on redundancy of asserted IPR grounds not appealable

The Federal Circuit held, pursuant to 35 U.S.C. § 314(d), that it does not have jurisdiction to review an institution decision, because a “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” The PTAB’s decision on the redundancy of Harmonic’s asserted grounds for review constituted a portion of the Institution Decision and was therefore unappealable, absent some other appealable question.

Bass, Spangenberg IPR of Juxtapid gets instituted by PTAB

Kyle Bass and Erich Spangenberg (Coalition for Affordable Drugs) won two more victories at the Patent Trial and Appeal Board (PTAB). This time Bass and Spangenberg obtained favorable institution decisions in two inter partes review (IPR) petitions filed against the University of Pennsylvania, which challenged patents covering Juxtapid, which it intended to slow cholesterol production so that your body has less cholesterol to remove from the bloodstream.

CAFC: Reference May Anticipate if it Inherently Teaches Claimed Combination of Elements

The Court affirmed the Board’s finding that one Figure and certain passages in the description of the reference disclosed a limited number of elements and suggested combining them in a manner that anticipated the system claimed by Blue Calypso. Thus, “a reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.” This was an anticipation, without resort to obviousness, because the reference sufficiently disclosed making the combination, though not expressed a single embodiment or example.

BRI in IPR may be narrower than broadest ordinary meaning, broader than Phillips standard

The Court noted that the Board failed to account for how the claims and specification inform the ordinary skilled artisan as to what ordinary definition the patentee was using. The Court noted that just because “around” has several dictionary definitions does not mean all these meanings were reasonable in light of the specification. The Court argued that all of the components of the cable connectors encircled an inner electrical conductor, and thus it would seem odd to construe “reside around” without recognizing the context of its use in terms of the cable.

CAFC reaffirms PTAB discretion not to address all claims in IPR final written decision

On February 10, 2016, a divided Federal Circuit panel reaffirmed the Patent Trial and Appeal Board’s (PTAB) authority to institute trial and provide a final written decision on only a subset of the challenged claims in an AIA post-grant proceeding. At issue on appeal was the PTAB’s final decision not to address all claims that were challenged in the underlying inter partes review (IPR) Petition.

Senate Small Business Committee hearing focuses protecting rights of patent owners

Committee chairman Senator David Vitter (R-LA) began the hearing by speaking about the importance of a strong patent system to small businesses all over America, as well as the importance of those small businesses to the U.S. economy. Vitter remarked that small businesses have provided two-thirds of all net new jobs since the 1970s and they also produce 16.5 times more patents per employee than larger enterprises. Recent legislation causing major changes in the country’s patent system, including the Leahy-Smith America Invents Act (AIA), have made it more difficult to enforce patent rights. “It’s essential to remember that many legitimate owners of intellectual property do not manufacture anything but nonetheless have legitimate claims of patent infringement against other parties,” Vitter said. He was also wary of the “staggering rate” of decline in patent value during recent years, stating that during the past four years patent values have dropped by as much as 80 percent.

PTAB Gone Rogue on Covered Business Methods

In CBM2015-00161, the Patent Trial and Appeal Board (PTAB) at the United States Patent & Trademark Office (USPTO) recently instituted a Covered Business Method (CBM) review on a non-business method patent with a clear and unambiguous technological aspect. This institution decision is in direct contravention of the statute, which is by its express terms prevents CBM review from anything with a technical aspect. In short, only covered business methods, which are financial related business method patents without a technological aspect, are supposed to be subject to this special form of post grant review. Even more troubling, the patent in question has been found to be directed to technological improvements by both the European Patent Office and the United States Federal District Court for the Northern District of Illinois. Nevertheless, the PTAB still instituted a CBM.

Nike v. Adidas: Federal Circuit refines PTAB motion to amend practice in inter partes review

The USPTO argued that at the heart of the requirement that substitute claims be patentable over prior art not of record but known to the patentee is nothing more than a requirement that the patent owner submit information necessary to satisfy the duty of candor owed to the Office. The Federal Circuit agreed, but noticed that there was no allegation that Nike had violated the duty of candor. Absent an allegation that there has been a violation of the duty of candor, the Federal Circuit ruled that it is improper to deny a motion to amend for failure to raise prior art not found in the granted petition.

‘Y’ Patent on Presidents Day? Jefferson’s Revenge

Under President Jackson America rebooted the patent system and started numbering patents from 01. The prior patents under the Jeffersonian registration system were re-designated with the letter X. Since the American Invents Act (AIA) in 2011, we now have a Patent Trial and Appeal Board (PTAB) within the United States Patent and Trademark Office. This PTAB has the authority to hold administrative trials for the purpose of stripping property rights from patent owners. Perhaps we should once again re-designate all issued patents, this time with the letter “Y” after they survive what is essentially a de novo redo by the PTO. Why “Y”? “Y bother to patent anymore”? Or perhaps “Y bother to spend the time and money for a lengthy and onerous examination process that seems to mean nothing”?

Patent Claim Interpretation: The Broadest Reasonable Interpretation Standard

The broadest reasonable interpretation standard is frequently referred to simply as BRI within the industry. The Patent Office applies the broadest reasonable interpretation in virtually all circumstances. Whether the Patent Trial and Appeal Board (PTAB) should be using the broadest reasonable interpretation when it reconsiders previously issued patents in post grant proceedings will soon be considered by the United States Supreme Court. Notwithstanding, the focus of this article is not specifically to evaluate the merits of the Cuozzo appeal, but rather to generally discuss the broadest reasonable interpretation standard and what it means from an analytical perspective.

One-fifth of all IPR petitions denied institution according to 2015 PTAB report

One major takeaway from this PTAB trends report is that, despite claims of high rates of patent invalidation, the reality is that many patents escape the PTAB petitioning process unscathed. To be fair, 18 percent of all PTAB trials lead to an invalidation of every claim challenged in the patent, but one-fifth of all trials are terminated because the petitioning party is denied institution. Thus, the most common result of an inter partes (IPR) or covered business method (CBM) review is that the petitioner is told that they did not make a good enough case for the challenge to progress beyond a hearing before a panel of administrative patent judges (APJs).

First Apple patent challenged at PTAB covers touch-to-zoom tech at center of Samsung war

In late January, however, an inter partes review (IPR) request filed with the Patent Trial and Appeal Board (PTAB) throws the future of one of the Apple patents involved with this case into question. IPR2016-00500, filed by Intellectual Integrity, LLC, of Frisco, TX, challenges multiple claims in Apple’s U.S. Patent No. 7864163, titled Portable Electronic Device, Method, and Graphical User Interface for Displaying Structured Electronic Documents. This is one of only three utility patents owned by Apple brought up in its infringement lawsuits against Samsung. This also marks the first time that an IPR has been requested to review one of Apple’s many patents.

Is the IPR tide about to turn at the Patent Trial and Appeal Board?

Recently the United States Supreme Court added an important IPR case to its docket. Normally the Supreme Court does not take a Federal Circuit appeal to compliment the Court on how well they have resolved a particular matter, so it seems safe to bet that the Federal Circuit will be reversed on one or both of the issues take. At the very least the Supreme Court can be expected to make broad statements of law and principle and remand the case for further consideration. In either event the outcome would be welcomed by patent owners. In the meantime as we wait for a decision it will also be interesting to watch and see if the PTAB begins to moderate and whether the Federal Circuit shifts their jurisprudence, as they have been known to do from time to time while awaiting a decision from the Supreme Court.

An Exclusive Interview with USPTO Director Michelle Lee

There were no topics ruled out of bounds for this 30 minute interview, not even the Supreme Court’s recent decision to accept cert. in Cuozzo, although as an attorney myself I know better than to ask questions that would have certainly provoked a polite “no comment” response in the face of ongoing litigation. Nevertheless, our conversation was wide ranging. We discussed the release of the Copyright White paper, which among other things recommends expanding eligibility for statutory damages in copyright infringement actions. We also discussed Lee’s recent visit to the Consumer Electronics Show (CES), the power outage that brought down USPTO electronic filing systems, the Office’s patent quality initiative, the new patent classification system, the Patent Trial and Appeal Board (PTAB) and more.

Printed Matter Doctrine Implicates Matter That Is Claimed for What it Communicates

The Court held that printed matter must be claimed for what it communicates, and it is only afforded patentable weight if the claimed informational content has a functional or structural relation to the substrate. In this case, the Court held that the Board erred in finding that the origins of the web assets made them printed subject matter, because nothing in the claim called for the origin to be part of the web asset.