April 18, 2016Newsletter

This Week at the Board - April 18, 2016

Federal Circuit Overturns PTAB Decision Based on Unreasonably Broad Claim Construction

In a decision on April 6, 2016 (Cutsforth, Inc. v. MotviePower Inc., 2015-1314), the Federal Circuit reversed the PTAB's determination that claims 14, 16-19, and 21-22 of U.S. Patent No. 7,141,906 were anticipated by prior art due to the fact that the Board erred in construing the claims. The Federal Circuit concluded that the Board’s application of the “broadest reasonable interpretation” standard was improper because the Board’s claim construction exceeded the scope of the plain meaning of the claim terms in a manner not justified by the specification. The Federal Circuit pointed to another recent decision to reiterate that, while claims are given their broadest reasonable interpretation in IPR proceedings, claim interpretation still “must be reasonable in light of the claims and specification.” PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, --- F.3d ---, No. 2015-1364, 2016 WL 692369, at *5 (Fed. Cir. Feb. 22, 2016).

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

PTAB Assists Petitioner in Request for Reconsideration of an Institution Decision

In IPR 2015-01189, the PTAB granted a Petitioner’s Request for Reconsideration, finding that an asserted prior art reference did, in fact, qualify as prior art based on a priority claim not properly established by the Petitioner in the Petition for IPR. Interestingly, in the Request for Reconsideration, the Board found that the Petitioner’s arguments still did not properly establish the priority claim of the reference. Instead, the Board analyzed the continuity of the asserted reference itself and set forth the proper rationale for establishing the asserted reference as prior art.

A link to the PTAB’s decision is provided here.
PTAB Cancels Design Patent Claim as Obvious

In IPR2015-00306, the PTAB found the claim in a design patent unpatentable as obvious over the prior art. Initially, the PTAB found that the claim was not anticipated by the prior art under the “ordinary observer test.” The PTAB acknowledged that petitioner had identified several common elements between the claimed design and the prior art. The PTAB concluded that the prior art required particular design modifications that would not be so immediate that an ordinary observer would “at once envisage” the claimed design to establish anticipation. The PTAB found that the particular design modifications were “straightforward modifications” that rendered obvious the claimed design.

A link to the PTAB’s decision is provided here.
PTAB Holds Certificate of Correction in Abeyance Pending Resolution of IPR Proceeding

In IPR2015‐01609, the PTAB concluded that the Patent Owner had a duty to request permission before filing a request for a certificate of correction, citing Inc. v. Vivint, Inc., Case IPR2015-01995 (PTAB Jan. 28, 2016) (Paper 10). The PTAB held that “given that (1) any prejudice due to the Certificate would fall on lack of notice to, and, thus, unfairness to, Petitioner, (2) Patent Owner asserts that the Certificate does not change claim scope, (3) Patent Owner had notice of its own claims at all times, and (4) the current advanced stage of the proceeding, we determine that the most equitable course would be for all parties, and the Board, to agree to proceed with the Certificate held in abeyance under 37 C.F.R. § 42.7(b).”

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


Claim Construction in the PTAB and District Courts
FCBA Patent Litigation 2016: The Courts and the Patent Trial and Appeal Board

April 28, 2016

Speaking Engagement

Grounds for Sanctions at the PTAB
May 3, 2016
12:00 - 1:00 PM

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