March 16, 2016Newsletter

This Week at the Board - March 16, 2016

PTAB Grants Petitioner’s Request for Rehearing Based on Misplaced Decimal Point

In a rare decision, the PTAB recently granted Petitioner, Boston Scientific's request for rehearing in an Inter Partes Review. In the request, the Petitioner asked the board to reconsider institution of the Inter Partes Review on claims 1-20 of U.S. Patent No. 6,266,523 (The Board of Trustees of the University of Alabama, UAB Research Foundation). The Petitioner was able to prove that the Board erred in its initial decision denying institution because the ‘523 Patent’s priority claim was improper, thereby rendering an asserted reference prior art. In particular, the Board’s initial decision misplaced a decimal point of a value identified by the Petitioner’s declarant to construe a claim term, which rendered the claims unsupported by the priority document.

This case is a clear illustration of the type of error needed to obtain a rehearing. In rarely granted cases, such as this one, a Petitioner must be able to define the Board’s ‘clearly erroneous factual findings’ or ‘clear error judgment’ that led to an improper decision.

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

Amicus Brief Filed by IPO's Calls for Removal of BRI Standard and for Availability of Judicial Review

The Intellectual Property Owners Association (IPO) recently filed an amicus brief with the U.S. Supreme Court, arguing that the Broadest Reasonable Interpretation (BRI) claim construction standard should not be used in AIA trials and that judicial review of AIA trials should be available. These arguments are in line with numerous other amicus briefs filed recently by companies and organization such as 3M, Interdigital, Inc. and the Biotechnology Innovation Organization (BIO), which have also called for removal of the BRI standard and/or for the availability of judicial review of AIA trials.

A link to the Supreme Court’s decision is provided here.

Petitioner Becomes Patent Owner Following Bankruptcy Proceeding

In In re Varma, No. 2015-1502, and Investpic LLC v. Int’l Business Machine Corp., et al., No. 2015-1667, slip op. (Fed. Cir. Mar. 10, 2016), the Federal Circuit vacated the claim constructions that had been affirmed by the Board in two reexamination proceedings. The Federal Circuit noted that the patent owner had amended the claims based on “amendments ‘essentially and helpfully suggested by the Examiner.’” Both the examiner and the Board disregarded the narrowing amendment and construed the claims unreasonably broad. The Federal Circuit also rejected the Board’s use of the transitional term “comprising” and the article “a” to justify a broad claim construction of the phrase “a statistical analysis request corresponding to two or more selected investments.” The Federal Circuit rejected the Board’s analysis that two requests corresponding to a single investment fell within the scope of the claim. The Court state, “For a dog owner to have ‘a dog that rolls over and fetches sticks,’ it does not suffice that he have two dogs, each able to perform just one of the tasks.”

A link to the Federal Circuit’s decision is provided here.

Petitioner Becomes Patent Owner Following Bankruptcy Proceeding

In IPR2015-00481, the PTAB ordered briefing on ownership of the patent in view of the outcome of a bankruptcy proceeding involving the patent. Only petitioners filed a brief regarding ownership of the patent. After reviewing the brief, the PTAB concluded that one of the petitioners had acquired the entire right, title and interest in the patent during the bankruptcy proceeding. Accordingly, that petitioner was now the patent owner in the IPR proceeding, and the PTAB accepts the request for adverse judgment by the new patent owner.

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


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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