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February 18, 2016Newsletter

This Week at the Board

Federal Circuit Says that the PTAB is Not Required to Review All Challenged Claims in an IPR Petition

In a recent Federal Circuit decision (Synopsis, Inc. v. Mentor Graphics Corporation, 2014-1516, 2014-1530), the Federal Circuit has held that the PTAB is not required to review all challenged claims in an IPR petition. 

As background, the petitioner Synopsis originally filed a Petition for IPR with the PTAB, alleging that certain claims of a patent owned by Mentor Graphics Corporation were invalid as being anticipated by prior art. At the institution stage, the PTAB instituted an IPR on some of the claims asserted as being invalid in the Petition, but not on others. The IPR trial proceeded, resulting in a final written decision in which the PTAB found some of the instituted claims invalid, while other instituted claims were upheld. Synopsis appealed the final written decision to the Federal Circuit, arguing that the PTAB was required to address all claims that were raised initially in the Petition. In support, Synopsis argued that IPR’s were intended to be a complete substitute for patent infringement litigation, at least with respect to invalidity based on patents and printed publications, and that by not addressing all claims that were raised initially, the IPR would only have limited estoppel effect.

The Federal Circuit first held that because this was an appeal regarding the scope of the final written decision, as opposed to the institution decision itself, that the Federal Circuit was allowed to hear the appeal. The Federal Circuit then noted that the current statutes cannot be read to require the PTAB to address every claim that was raised initially in the Petition. The Federal Circuit found that the intent of Congress was clear in the statutes, that the PTAB has the authority to address patents on a claim by claim basis, that the PTAB only needs to issue a final written decision with respect to claims on which the IPR was actually instituted, and that challenging the validity of non-instituted claims is still available in the district courts, thereby providing an opportunity to challenge every claim of a challenged patent. 
 
A link to the PTAB's decision is provided here.
 
PTAB Denies CBM Review After Patent Owner Disclaims the Only Claims that Were Directed to a Covered Business Method
 

In CBM2015-00171, the petitioner had challenged all 20 claims of the patent. In its preliminary response, the patent owner indicated that it had filed a statutory disclaimer under 37 C.F.R. § 1.321(a) of only claims 1–10. In the decision denying CBM review, the PTAB had to decide whether it should consider the disclaimed claims 1–10 in determining whether the patent is a covered business method patent. It concluded that it would not consider the disclaimed claims and denied CBM review because the remaining challenged claims were not covered business method claims.
 
A link to the PTAB’s decision is provided here.
 
PTAB Finds that Appendix Submitted with Patent Application Was Incorporated by Reference into Issued Patent
 

In IPR2015-01707, the Board instituted trial on some of the challenged claims based on a patent that referenced an appendix filed with the patent application. In its preliminary response, the patent owner argued that the patent did not meet the requirements to incorporate by reference the appendix. The PTAB disagreed stating that “[a]lthough the relevant portions of Payne do not use the exact words ‘incorporation by reference’ in conjunction with Appendix F, Payne explicitly refers to Appendix F on numerous occasions, and we are persuaded that the totality of circumstances supports the implications that the contents of Appendix F (1) were filed with the application on October 24, 1994, (2) were accessible as of the issue date of Payne, and (3) were intended to be a part of Payne.” 
 
A link to the PTAB’s decision is provided here.
 
PTAB Rejects Patent Owner Argument that Person Who is Not of Skill in the Art Cannot Invent Relevant Prior Art
 

In IPR2014-01240, the petitioner relied on a newspaper article that disclosed an eyewear retainer attributed to Mark Sosin. The patent owner argued that the PTAB could not rely on the eyewear retainer attributed to Mr. Sosin because he was not a person of ordinary skill in the art and because the invention would have to have been made by a skilled designer of eyewear. The PTAB rejected these arguments noting that patent owner had not presented any “case law disqualifying one of purportedly less than ordinary skill in the art from inventing relevant prior art.” 
 
A link to the PTAB’s decision is provided here.
 
Upcoming Internal Events
 

Amending Claims Challenged in an Inter Partes Review
 

March 8, 2016
12:00 - 1:00 pm
Complimentary Webinar
 
Click here to read more
 
Overview of Post-Grant Proceedings Under the America Invents Act
 

March 31, 2016
12:00 - 1:00 PM
Complimentary Webinar
 
Click here to read more

Upcoming External Events
 

PTAB "Boardside Chat” Webinar Series
  
April 5, 2016
12:00 - 1:00 pm
Complimentary Webinar hosted by USPTO
 
Click here to read more

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