February 25, 2016Newsletter

This Week at the Board

Federal Circuit Finds that Patent Owners Must Still Prove Patentability of Proposed Amended Claims, but that Patent Owners Do Not Need to Provide a Detailed Explanation of Why the Claims are Patentable Over “Other Prior Art Known to the Patent Owner”

In a recent Federal Circuit decision (Nike, Inc. v. Adidas AG, No. 2014/1719, slip op. (Fed. Cir. [Feb. 11, 2016]), the Patent Owner (Nike, Inc.) filed a motion to amend during an IPR. The motion to amend was denied, because the Patent Owner failed to prove the patentability of the proposed amended claims. The Patent Owner appealed, arguing that the burden should not have been on the Patent Owner to prove the patentability of the proposed amended claims. The Federal Circuit disagreed, noting that the statutory language makes clear that the burden placed on the Petitioner in an IPR is directed to the challenged claims at issue in the IPR, whereas proposed amended claims provided by the Patent Owner during the IPR fall outside of this focus, thereby making it proper to place the burden of proving patentability for these on the Patent Owner (upholding the Federal Circuit’s Proxyconn decision).  

Additionally, in the motion to amend, the Patent Owner stated that “[t]he proposed claims are patentable over the prior art, including prior art identified by the Board in its Decision on whether to institute a trial and other prior art known to Nike.” Emphasis added. The PTAB asserted that the Patent Owner needed to provide further description and explanation of the patentability of the proposed claims over the “other prior art known” to the Patent Owner. The Federal Circuit disagreed, finding that the Patent Owner’s statement alone was enough to address the other prior art known to the Patent Owner, and that there is no requirement for a Patent Owner to provide anything further, absent an allegation of conduct violating the duty of candor on the Patent Owner’s part. 

Additionally, in the motion to amend the Patent Owner provided evidence of secondary considerations, specifically evidence of long-felt need. However, the PTAB did not address the secondary considerations in the final written opinion. The Federal Circuit instead remanded the case back to the PTAB, requiring the PTAB to examine and comment on the patent owner’s evidence of secondary considerations. 

A link to the PTAB’s decision is provided here.

PTAB Finds that Burden of Proving Priority For a Claim May Shift to Patent Owner During an IPR, But in This Case Finds That the Evidence of Priority is Clear From the Record

In a recent PTAB decision (IPR2015-01694), the Petitioner in an IPR asserted that certain challenged claims lacked priority to the Patent Owner’s earlier application based on a lack of written description support, and were thus unpatentable based on prior art. The PTAB noted that the burden of production in an IPR may, in certain circumstances, shift to the Patent Owner. However, in this case the PTAB found it unnecessary to determine whether the burden of production shifted to the Patent Owner on the issue of written description support, because even if the Patent Owner bore the burden, the PTAB was able to determine on its own from the record that there was clearly sufficient written support for the challenged claims.

A link to the PTAB’s decision is provided here.

PTAB Admonishes Party for Using Documents Subject to District Court Protective Order to Request Additional Discovery

In IPR2015-01247, patent owner used documents obtained in litigation and subject to the district court’s protective order to request authorization to file motion for additional discovery. The PTAB declined to entertain the request for discovery because the documents were obtained in a district court proceeding under the protective order entered by the court. The PTAB questioned whether patent owner’s use of the documents was in compliance with the court’s protective order. The PTAB directed the patent owner to seek relief from the district court before renewing any requests for additional discovery. 

A link to the PTAB’s decision is provided here.

PTAB Declines To Modify Default Protective Order As Premature

In IPR2015-01277, the PTAB declined to modify the default protective order because patent owner had not “made sufficient efforts to de-designate, redact or otherwise eliminate or at least reduce the amount of third party confidential information subject to the protective order in the ITC proceeding that Patent Owner seeks to submit in these IPR proceedings.” The PTAB reminded the parties that information subject to the PTAB’s protective order becomes public 45 days after a final judgment in an AIA trial and that there is an expectation that the information will be made public where the existence of the information is identified in a final written decision following a trial. The Board directed the patent owner to advise the third-party that the documents may be made public “so as to ensure that the third party’s agreement to the use of its information in these IPR proceedings is with the knowledge of the risks associated with the submission of the information to the Board.”

A link to the PTAB’s decision is provided here.

PTAB Explains Difference between Broadest Reasonable Interpretation and Phillips Standard

In IPR2015-01615, the petitioner requested review of certain claims of an expired patent and provided proposed claim constructions of certain claims that were construed previously by a district court. The patent owner did not dispute the constructions, but argued that the “Petitioner incorrectly sets forth the standard for claim construction in this case as the broadest reasonable interpretation in light of the patent specification (‘BRI’).” The PTAB agreed with Patent Owner that the Phillips standard should apply in this case because the patent had expired. The PTAB disagreed, however, with the Patent Owner’s characterization of the difference between the BRI standard and the Phillips standard: “A notable difference between these two standards is that the BRI standard confines its analysis to the content of the patent specification (intrinsic evidence only), while the Phillips standard considers both intrinsic evidence (the claims, specification and prosecution history) and extrinsic evidence (dictionary definitions and expert testimony).” The PTAB clarified that under the BRI standard, the PTAB considers all relevant intrinsic evidence (claims, specification, and prosecution history) and extrinsic evidence (such as dictionary definitions and expert testimony).

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
Overview of Post-Grant Proceedings Under the America Invents Act

March 31, 2016
12:00 - 1:00 PM
Complimentary Webinar

Upcoming External Events
PTAB "Boardside Chat” Webinar Series

April 5, 2016
12:00 - 1:00 pm
Complimentary Webinar hosted by USPTO
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Past Editions of This Week at the Board

February 18, 2016

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