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September 8, 2017Newsletter

This Week at the Board - September 8, 2017

Federal Circuit Vacates PTAB Decision For Inadequate Reasoning

The Federal Circuit recently vacated a PTAB decision, finding that the PTAB failed to provide adequate reasoning to support its finding of obviousness.  Specifically, the Board had found that it would have been routine optimization for a skilled artisan to select and adjust the claimed surfactants to achieve a cloud point above at least 70°C.  The Federal Circuit, however, held that the Board had failed to initially establish a prima facie case of obviousness, because the Board never explained why it would have been routine optimization, and why a person of ordinary skill would have had a reasonable expectation of success to formulate the claimed system.  The Federal Circuit noted that merely stating that a person of ordinary skill would have arrived at the claimed invention through routine optimization “falls short” of the standard.

A link to the decision is found here.

Federal Circuit Raises Concerns About Joinders In IPRs

Judges from the Federal Circuit recently commented (in dicta) on joinder practices in a concurring Federal Circuit decision.  The judges expressed concerns that time-barred petitioners were using the joinder statute to enter into inter partes reviews filed by other parties, and to raise new patentability issues in those inter partes reviews, rather than simply joining the other party’s inter partes review to address the same patentability issues.  The judges felt that it was unlikely that Congress intended for petitioners to circumvent the one-year time bar in this manner to introduce new issues in a later-filed inter partes review.   

A link to the decision is found here.

PTAB Denies Motion to Stay IPR Pending U.S. Supreme Court Decision

A patent owner in a recent inter partes review asserted that the inter partes review violated the U.S. Constitution by seeking to extinguish private property rights through a non-Article III forum without a jury or a fair opportunity to be heard.  The patent owner asked the PTAB to stay the proceeding pending the U.S. Supreme Court’s decision in Oil States Energy Services, LLC v Greene’s Energy Group LLC, cert. granted (from IPR2014-00215).  The Board denied the request, noting that the outcome of the U.S. Supreme Court’s decision was too speculative to overcome the mandate to “secure the just, speedy, and inexpensive resolution of every proceeding” as required by  37 C.F.R. §42.1., and that the backlog resulting from a stay of this and similarly situated cases would jeopardize the Board’s ability to issue final determinations as required by statute.

A link to the decision is found here.

PTAB Finds Secondary Considerations To Be Persuasive In IPR

The Board recently reviewed and considered evidence of secondary considerations in an inter partes review.  The Board noted that to be accorded substantial weight, there must be a nexus between the merits of the claimed invention and the evidence of secondary considerations.  The Board was persuaded by the patent owner’s extensive evidence of a nexus between its Render House and Twister products and the challenged claims.  The patent owner sufficiently stepped through each challenged claim on an element-by-element basis and directed the Board to images and specific passages from its Render House and Twister user guides that it argued embodied the limitations of each challenged claim.  The patent owner also provided a declaration from an expert that included a claim chart detailing where each limitation of the challenged claim was found in its products.  The Board found that the patent owner had thus provided sufficient evidence of commercial success and industry praise, and concluded that the petitioner had not met its burden to show that the challenged claims would have been obvious.

A link to the decision is found here.

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