Category Archives: Patent Trial and Appeal Board

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PTAB Again Finds that a Prior Reference Fails to Qualify as Prior Art

After some exhaustive internet searching, you just found the perfect prior art reference for your case. It’s an article with a vintage prior to your critical date, and, more importantly, it appears to anticipate or render obvious every claim of the patent asserted against you. Time to file your IPR, right? Not so fast. With … Continue Reading

Ticket to Join the Party: Challenges with Raising New Arguments When Attempting to Join Inter Partes Review

A party may join an already filed inter partes review (IPR) petition under 35 U.S.C. § 315(c). This may be done to avoid the one-year statutory bar or to ensure that the petitioner can maintain the IPR if the parties to the previously filed IPR settle. But there is no right to joinder; 35 U.S.C. … Continue Reading

Hyperlink as Printed Publication? Take a Ride on the Way-Back Machine

A PTAB panel recently provided further guidance to the “printed publication” requirement for IPR. The types of information that can serve as bases for a validity challenge in an IPR are limited to “patents and printed publications.” Not surprisingly, petitioners have sought to expand the kinds of materials that can serve as “printed publications.” Examples … Continue Reading

Covered Business Method Patent Reviews – Is Your Patent Susceptible to Review?

Recent decisions by the Patent Trial and Appeal Board (PTAB) and the Federal Circuit have left patent owners with some uncertainty as to whether their patents could be subject to review and invalidation under the America Invents Act’s Covered Business Method (CBM) review process. The AIA created CBM review to provide an opportunity for petitioners … Continue Reading

Trying to show obviousness? Provide good, articulated reasoning—and prove that the combination will actually work.

Obviousness can be an unpredictable ground for challenging the validity of a patent. Superficially, obviousness may appear to be somewhat subjective, but it must be based on objective facts that prove that the combined references really can operate together. The courts and PTAB continue to refine the obviousness standard, clarifying how to fall under an … Continue Reading

Secondary Considerations Save the Day for Bottle Cap Patent

In World Bottling Cap v. Crown Packaging Technology, the PTAB relied upon the patent owner’s “compelling evidence of secondary considerations” to uphold the patentability of a bottle cap patent. The patent claimed a seemingly simple invention, a bottle cap made from steel that is thinner and harder compared to that of conventional caps. All elements … Continue Reading

PTAB Brews a Bitter Cup for Keurig (IPR2016-1390 et al.)

Keurig Green Mountain, vendor of the well-known Keurig brand of single-cup coffee brewers, brought five separate IPR challenges to four beverage brewing system patents owned by Touch Coffee and Beverages. In early January, the PTAB refused to institute review of most of the claims, concluding that Keurig failed to provide a rationale for the allegedly … Continue Reading

The PTAB’s Determination of Whether Assignor Estoppel Precludes IPR Institution Cannot Be Appealed

The Federal Circuit recently added the PTAB’s decision on whether assignor estoppel precludes institution of an inter partes review (IPR) petition to the growing list of nonreviewable issues in an IPR. Husky Injection Molding Systems Ltd. v. Athena Automation Ltd. was an appeal from the PTAB’s final decision finding claims 1, 4-16, 18, and 20-22 … Continue Reading

Federal Circuit Clarifies That Decisions on Time Bar Cannot Be Appealed

In a recent decision, the Federal Circuit affirmed that PTAB Board determinations regarding real parties in interest and privity cannot be appealed. Note to practitioners: Don’t waste your time arguing that a petition was time-barred under Section 315(b) once denied by the Board. The patentee in WiFi One, LLC v. Broadcom argued that Broadcom was … Continue Reading

Motions to Exclude Rarely Successful at PTAB

In the several years of post-grant practice, the Patent Trials and Appeals Board has been reluctant to grant Motions to Exclude Evidence. Instead, the Board has made clear that it strongly favors maintaining a complete record, noting that “there is a strong public policy for making all information filed in a nonjury, quasi-judicial administrative proceeding … Continue Reading

The PTAB’s Claim Constructions Will Likely Have Minimal Impact in the District Court

It is an understatement that claim construction is important to the ultimate merits of non-infringement and invalidity. In many district courts, a claim construction decision is not issued until the parties are well into fact discovery, which could be a year or so from filing. With inter partes review (IPR), however, a decision construing claim … Continue Reading

Federal Circuit Rejects PTAB Burden-Shifting Framework

The USPTO has long applied a burden-shifting framework during prosecution of U.S. patent applications. Under that framework, the USPTO examiner bears an initial burden of providing a prima facie case of obviousness. After that, the burden shifts to the applicant, who may submit additional evidence of non-obviousness. This approach is said to further the goals … Continue Reading

Federal Circuit Clarifies Scope of Evidence Used In IPRs

As the America Invents Act (“AIA”) approaches its fifth birthday, the contours of one of its popular procedures, Inter Partes Review (“IPR”), continue to take form.  In Genzyme Therapeutics Products Limited Partnership v. Biomarin Pharmaceutical Inc., the Federal Circuit (“CAFC”) clarified what evidence the Board can consider in its final decisions. The Genzyme patents relate … Continue Reading

Federal Circuit Affirms PTAB’s Denial of Motion to Amend, Upholds PTAB Standard, and Maintains PTAB’s Largely Unbroken Streak

The PTAB rarely grants motions to amend claims of IPR proceedings, largely because of the standard requiring the patent owner to demonstrate the patentability of the amended claims. In a recent case, In re Aqua Products, Inc., 2015-1177 (Fed. Cir. May 25, 2016), the Federal Circuit affirmed this requirement placed on the patent owner. In … Continue Reading

A Trial Lawyer’s Observations of a PTAB Proceeding

I have been a trial lawyer for 40 years, trying jury and bench trials in federal courts throughout the United States, in many state courts, before the International Trade Commission and other regulatory and arbitral entities – and even before the Iran U.S. Claims Tribunal. I recently completed my first trial at the United States … Continue Reading