June 3, 2016Newsletter

This Week at the Board - June 3, 2016

PTAB Refuses to Review Teva Petitions after Missed Deadline

In IPR2016-00281 and IPR2016-00282, the PTAB denied institution of inter partes review because the petitioner (Teva Pharmaceuticals) missed the filing deadline. The statutory filing deadline for filing the petitions was on December 3, 2015, due to a complaint being served a year earlier on December 3, 2014. However, the petitions were not filed and paid for until early in the morning on December 4, 2015, and service was not effected until December 4, 2015, even though the petitioner noted that service was effected on December 3, 2015 in an email to the USPTO. The petitioner asserted that the delays were due to technical issues with the USPTO’s online filing system late on the evening of December 3, 2015. However, the PTAB did not find the petitioner’s arguments, or the declarations of its attorney and assistant, to be persuasive.

Federal Circuit Upholds PTAB Denial of Motion to Amend Based on Lack of Argument from the Patent Owner

In Fed. Cir. 15-1177, the Federal Circuit addressed a motion to amend from an inter partes review. During the inter partes review, the patent owner (Aqua Products, Inc.) had attempted to amend the claims in its patent with the motion to amend, but the PTAB denied the motion. In the final written decision, the PTAB concluded without analysis or evidence that certain limitations added in the proposed claims in the motion to amend were within the ordinary skill. The patent owner argued that this was improper, and that the PTAB should have addressed and provided analysis regarding the limitations in the final written decision. However, the patent owner had not argued in its motion to amend that those specific limitations distinguished the proposed claims over the combination of references. The Federal Circuit upheld the PTAB’s decision, noting that the PTAB was only required to consider and specifically address the particular arguments raised by the patent owner in its motion to amend.

Federal Circuit Again Addresses Software Patent Eligibility

In Fed. Cir. 15-1244, the Federal Circuit addressed patent eligibility for software patents, and provided new guidance regarding when a software patent may be eligible for patent protection. The Federal Circuit noted that the test for patent eligibility should assess whether the focus of the claims is on a specific improvement of an existing technology, as compared to merely applying computer components to well-known business practices. The Federal Circuit noted that software claims may be patent eligible even when the claim limitations are not defined by reference to physical components, and specifically noted that “[m]uch of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes.”

PTAB Orders Video Depositions

In IPR2015-01951 and related IPRs, the PTAB accepted the petitioner’s offer to make two declarants who reside in Australia available for a video deposition over the patent owner’s objections. The two declarants submitted short declarations to establish the prior art status of several references relied upon by the petitioner. The PTAB noted that the declarations were limited solely to fact testimony. The PTAB found that it would be unnecessarily costly and burdensome to the petitioner to make the Australia declarants available for live deposition in the United States to be cross-examined regarding their three-page declarations.

PTAB Declines to Adopt Sweeping Prohibitions to Content of Demonstrative Exhibits

In IPR2015-00780, the petitioner challenged several slides of the patent owner’s demonstrative exhibit. The petitioner argued that certain slides contained material that had not been specifically cited or discussed in the patent owner’s response. The PTAB rejected the petitioner’s argument because the content of the slides was from exhibits that were cited by the patent owner and there would be no prejudice to the petitioner. The PTAB also concluded that the patent owner could cite cross-examination testimony that is consistent with or provides context to arguments already made by the patent owner or dispute characterizations made by the petitioner during the cross examination or in the Petitioner Reply, as long as the cited testimony does not “expand” the arguments made in the Patent Owner Response.

Federal Circuit Finds All Claims to Be Patentable in Cross-Appeal

In Fed. Cir. 15-1646, the patent owner (Black & Decker) and the petitioner (Positec USA, Inc. and RW Direct, Inc.) each appealed the PTAB’s final written decision in which two claims were found to be unpatentable and two others were found to be patentable. The patent owner appealed the findings of unpatentability, while the petitioner cross-appealed the patentability of the other claims. In its decision, the Federal Circuit found all the claims, which were directed to a string trimmer, to be patentable. In upholding the patentability of two of the claims, the Federal Circuit noted that, while the PTAB had applied BRI improperly due to the expiry of the patent at issue prior to the final written decision, the construction was the same under the Phillips standard. In their reversal of the finding of unpatentability of the other two claims, the Federal Circuit found that the PTAB had made a legal error in the determination of obviousness because the PTAB failed to properly explain why a person of ordinary skill in the art would modify the prior art.

PTAB Finds Claims Patentable on Remand

In IPR 2013-00246, the PTAB found claims patentable after the Federal Circuit remanded for further proceedings. Originally, the PTAB rendered an initial final written decision in which the challenged claims were found to be unpatentable. The patent owner appealed, and the Federal Circuit subsequently reversed the cancellation of the claims based on a different claim construction and remanded the case to the PTAB for further proceedings. More specifically, the Federal Circuit noted the PTAB had applied an overly broad construction because the PTAB ignored the clear, plain language of the claims. Using the new construction, the PTAB found that the petitioner had not proved by a preponderance of evidence that the challenged claims were unpatentable.

PTAB Requests Additional Briefing After Petitioner’s Request For Rehearing

In a recent order, the PTAB has sought additional briefing from a patent owner in response to a petitioner’s Request for Rehearing. This order is far from standard practice; the PTAB normally reviews the Request for Rehearing to determine if the PTAB misapprehended or overlooked matters pertinent to their decision and simply issues a decision. In this case, however, the PTAB has requested, but does not require, that the patent owner submit a short brief addressing the petitioner’s characterization of the prior art in the Request for Rehearing without introducing any new evidence.

Amicus Briefs Urge U.S. Supreme Court to Find that PTAB Does Not Have the Authority to Adjudicate Patents

Eight different amicus briefs have recently been filed in an ongoing U.S. Supreme Court case (MCM Portfolio LLC v. Hewlett-Packard Co., case number 15-1330). This case is directed to the issue of whether the PTAB has the legal authority to adjudicate patents, including adjudication through AIA post-grant proceedings. Some of the amicus briefs have been filed by small business groups and technology companies, urging the U.S. Supreme Court to find that the PTAB does not have the authority to adjudicate patents, and that this authority rests solely with Article III courts. The parties filing the briefs have argued that patents are private property rights, which must be adjudicated in the courts, not at the PTAB.  

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