June 30, 2016Newsletter

This Week at the Board - June 30, 2016

PTAB Authorizes Reply and Sur-Reply in Connection with Patent Owner’s Preliminary Response
In IPR2016-00537, the Patent Owner argued in its preliminary response that a patent asserted by the Petitioner did not qualify as prior art under 35 U.S.C. § 103(c).  The issue turns on the interpretation of Australian law regarding the ownership of a patent.  The PTAB granted Petitioner’s request to file a reply because the PTAB would benefit from briefing on §§ 15 and 29 of the Australian patent laws pertaining to the application for and ownership of patents.  In addition, the PTAB granted Patent Owner’s request to file a sur-reply on the issue of ownership under Australian law.  The Board, however, denied the parties request to submit declarations because they were unable to agree on terms of waiver of any rights to cross-examine their declarants.
PTAB Reverses Itself and Grants a Request for Rehearing
In CBM2016-00008, the PTAB instituted trial under 35 U.S.C. § 101, but denied trial under other grounds regarding obviousness.  On rehearing, the PTAB concluded that it had misapprehended Petitioner’s argument regarding the evidence that showed the element of the claimed invention.  After analyzing Petitioner’s argument under the correct evidence cited by the Petitioner, the PTAB concluded that Petitioner had demonstrated that it is more likely than not that it would prevail under the obviousness grounds.  Therefore, the PTAB added the obviousness grounds to the CBM trial.

A link to the PTAB’s decision is provided here.
Federal Circuit Denies En Banc Review of Whether the PTO Director May Delegate Institution Decision Authority to the PTAB
In Fed. Cir. 2014-1771, the Federal Circuit denied a request for en banc review over the question of whether the PTO Director can delegate the authority of making Institution Decisions to the PTAB.  Judge Newman wrote a dissenting opinion, in which she asserted that the statutory division of responsibility makes clear that the Director is to be responsible for making Institution Decisions, not the PTAB, and that this division of responsibility was intended as a safeguard to ensure that the threshold decision to institution neither “pre-ordains nor prejudices that later decision on the merits.” 
A link to the Federal Circuit’s decision and to Judge Newman’s dissent is provided here.

Petition to the U.S. Supreme Court Raises Question of Whether Mandamus is Available After an Institution Decision
A recent petition to the U.S. Supreme Court by Trading Technologies International, Inc. raises the questions of whether mandamus is available when the PTAB has made a mistake at the institution stage.  In the petition, Trading Technologies asserts that the PTAB should not be allowed to proceed with a covered business method trial on a patent that is clearly not a covered business method patent under the statutes.  At the Federal Circuit, the Court held that Trading Technologies would need to wait until a final written decision to appeal the institution decision, citing the recent Versata decision (793 F.3d 1306, Fed. Cir. 2015).  The petition to the U.S. Supreme Court, however, asserts that permitting the PTAB to proceed with a CBM trial in contravention of its statutory authority harms the petitioner, and that the petitioner should not be forced to wait until a final written decision before being able to address the PTAB’s error.

A link to the petition is provided here.

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