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June 22, 2016Newsletter

This Week at the Board - June 22, 2016

U.S. Supreme Court Issues Opinion in Cuozzo Speed Technologies, LLC v. Lee

On June 20, 2016, the Supreme Court issued its highly anticipated opinion in Cuozzo Speed Technologies, LLC v. Lee, addressing two key aspects of inter partes review (IPR) practice before the Patent Trial and Appeal Board (PTAB) the extent to which appellate courts can review IPR institution decisions and the standard of claim construction that applies in IPR proceedings. The Court maintained the status quo on both issues, confirming that institution decisions cannot be reviewed absent unusual circumstances and upholding the PTAB’s application of the broadest reasonable interpretation for disputed claim terms.

A link to an alert on the topic published by Michael Best attorneys is provided here.

 

PTAB Stays Reissue Proceeding

In IPR2015-01593, the PTAB stayed the reissue examination of the patent that had been the subject of the IPR proceeding. In the proceeding, Petitioner was challenging claims 1 to 10 of the patent. Patent Owner then filed a reissue application, including a preliminary amendment cancelling claims 1 to 10 and adding new claims 11 to 20. Patent Owner sought to stay the IPR proceeding, which Petitioner opposed. Instead, Petitioner suggested the PTAB should construe the filing of the reissue application as a request for adverse judgment because Patent Owner was seeking to cancel the claims at issue in the IPR or stay the reissue application. The PTAB declined to stay the IPR proceeding or construe the reissue application as a request for adverse judgment. The PTAB noted that the reissue application had not been examined, and the cancellation of the claims does not take effect until the patent is surrendered and the reissue patent issues. Therefore, the PTAB stayed the reissue application.

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

 

PTAB Dismisses Petition with Respect to Claims Having Improper Dependency

In the final written decision of IPR2015-00309, the PTAB dismissed certain claims that had an improper dependency. The PTAB was unable to construe the claims having an improper dependency because it was unclear from which claims they should depend. The PTAB noted that the improper dependent claims recited a limitation that lacked an antecedent basis, but that would have a proper antecedent basis if they depended from one of several claims that recited the limitation providing a proper basis. The PTAB noted that “[u]nder Novo Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003), [it] would be permitted to correct the deficiencies in the recited dependencies in claims 18 and 19 if [it] could make the correction in a manner that was not subject to reasonable debate.” The PTAB explained, however, that the correction was subject of reasonable debate, so the claims were not amenable to correction under Novo Industries.

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

 

PTAB Reaffirms Assignor Estoppel is not Applicable to IPR Proceedings

In IPR2016-00303, the PTAB rejected Patent Owner’s argument that Petitioner was barred from filing an IPR petition under the doctrine of assignor estoppel. The panel reaffirmed the PTAB’s position (as explained in earlier decisions such as Athena Automation Ltd. v. Husky Injection Molding Sys. Ltd., Case IPR2013-00290, slip op. at 12–13 (PTAB Oct. 25, 2013) (Paper 18)) that the AIA statute provides: “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent.” 35 U.S.C. § 311(a) (emphasis added). “Consequently, under the statute, an assignor of a patent, who is no longer an owner of the patent at the time of filing, may file a petition requesting inter partes review.”

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

 

PTAB Finds Challenged Claims Unpatentable in First Post-Grant Review Decisions

The PTAB has issued its first ever final written decisions for post-grant review (PGR) proceedings in PGR2015-00003 and PGR2015-00005. In the decisions, the PTAB found that all challenged claims were unpatentable under 35 U.S.C. § 101 because the claims did not recite significantly more than an abstract idea. The PTAB also found all challenged claims to be unpatentable as obvious in view of the prior in PGR2015-00003, and found the majority of the claims to be obvious in view of the prior art in PGR2015-00005. In each case, the PTAB denied the Patent Owner’s motion to amend.

Links to the PTAB’s decisions are provided here.

 

Federal Circuit Finds that PTAB Improperly Changed Claim Construction in “Midstream”

In Fed. Cir. 2015-1346, the Federal Circuit reviewed a Final Written Decision from the PTAB, in which the PTAB used a significantly different claim construction for a particular claim phrase than that which the PTAB had used in the Institution Decision. The Federal Circuit agreed with the PTAB’s ultimate construction in the Final Written Decision but was not pleased with how the PTAB arrived at the claim construction, finding that the PTAB had changed claim construction theory in “midstream” without giving the Petitioner and Patent Owner reasonable notice of the change and the opportunity to present arguments under the new theory. The Federal Circuit therefore remanded the case back to the PTAB so that the Petitioner and Patent Owner could be afforded the opportunity to be heard on the new construction.

A link to the Federal Circuit decision is provided here.

 

Federal Circuit Helps Clarify What is Considered “New Evidence” in an IPR

In Fed. Cir. 2015-1721, the Federal Circuit reviewed a Final Written Decision from the PTAB, in which the PTAB referenced two pieces of prior art that were not relied upon in the Institution Decision. The Patent Owner argued that the Institution Decision must refer to every bit of evidence that is relied upon in the Final Written Decision. The Federal Circuit disagreed. The Federal Circuit held that one of the “new” references was mentioned in the Petition, and thus the Patent Owner had notice of it. Additionally, the Patent Owner specifically mentioned this reference in its Patent Owner Response. Additionally, both “new” references were mentioned in the Petitioner’s Reply, and the Patent Owner could have requested permission to file a Surreply or filed a Motion to Exclude. Thus, the Federal Circuit held that the Patent Owner had ample notice that the two references were in play. Additionally, the Federal Circuit noted the PTAB was merely using the two references to show the state of the art and was not using the two references in a ground of rejection. For these reasons, the Federal Circuit did not consider the two references to be new evidence.

A link to the Federal Circuit decision is provided here. 

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