December 4, 2017Newsletter

This Week at the Board - December 1, 2017

Board Extends Timeline of Proceeding in CBM

The Board is typically required to issue a final written decision within one year of institution of a covered business method review. However, pursuant to 35 U.S.C. §316(a)(11), the Board may, for good cause, extend that period by no more than six months. Recently, in CBM2016-00081, the Board determined that good cause existed (following the en banc decision by the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), which moved the burden of proving the patentability of a patent owner’s amended claims in a post-grant proceeding to the petitioner, not the patent owner, and extended the proceeding by an additional six months. 

A link to the decision can be found here.

Board Grants Request For Rehearing Despite Patent Owner’s Jurisdiction Arguments

In the petition for IPR2015-01802, the petitioner raised multiple grounds for invalidity of claims 2, 4, and 6 of the patent at issue, each based on the same prior art reference, but based on different claim constructions and on either §102 or §103. The Board accepted the first grounds during institution, and found the second grounds to be moot in view of the institution of the first grounds. In the final written decision, however, the Board found that the petitioner had not established that the claims were unpatentable under the first ground. The petitioner then filed a request for rehearing, asking the Board to find these claims unpatentable under the second ground initially considered moot. The patent owner objected, asserting that the Board “lacked jurisdiction” to determine that claims 2, 4, and 6 were unpatentable under the second ground because the Board had originally denied institution on this ground. The Board disagreed, noting that by instituting on the first ground, the patent owner was put on notice that the Board would be determining whether dependent claims 2, 4, and 6 were obvious over the prior art reference. The Board further noted that it had subsequently received briefing and evidence from both parties regarding whether claims 2, 4, and 6 were unpatentable based on the claim construction ultimately adopted by the Board in the final written decision. For this reason, the request for rehearing was granted, and claims 2, 4, and 6 were held to be unpatentable.      

A link to the decision can be found here.

back to top