Patent Trial and Appeal Board

News & Analysis as of

The First Wave of Post-Grant Appeals

2015 brought the first wave of Federal Circuit decisions in appeals from inter partes review (IPR) and covered business method (CBM) proceedings. The trend has been deference: in 83 post-grant appeals, the Federal Circuit has...more

Post-Grant Review Roils Patent Litigation Waters

The America Invents Act (AIA) has had a profound impact on patent litigation, particularly surrounding inter partes and other post-grant proceedings. Below, Manish K. Mehta, who handles patent litigation across an array of...more

Patent Owner Must Show Patentability Over Art of Record to Amend Claims in IPR

In In re Aqua Products, Inc., [2015-1177] (May 25, 2016), the Federal Circuit affirmed the PTAB’s denial of the patent owner’s motion to amend in IPR2013-00159. The Federal Circuit made quick work of the PTAB’s placing...more

AT&T Mobility LLC v. Intellectual Ventures II LLC (PTAB 2016)

Directory Assistance Call Completion Is Not A Financial Service for CBM Purposes - On May 4, 2016, the USPTO Patent Trial and Appeal Board (PTAB) issued a decision denying institution of a Covered Business Method (CBM)...more

Shifts in Amendments at the PTAB

Despite another year of attempts to amend in IPR and CBM, success is still rare. But is a change coming? In the summer of 2015, the PTAB issued its final written decision in REG Synthetic Fuels LLC v. Neste Oil OYJ,...more

PTAB Trials Rule Package Library

Some of you have requested a collection of the rule packages from the PTAB. ...more

PTAB Reversed for Failing to Explain “Why” a Person of Skill Would Modify the Prior Art

It is no secret that patent owners have, on average, struggled at the PTAB over the last three and a half years. Some practitioners say that a reason for this result is that the Board many times takes an aggressive approach...more

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. (Fed. Cir. 2016)

Have you ever mixed up the obviousness determinations of "motivation to combine" and "reasonable expectation of success"? If so, you are apparently not alone -- the Federal Circuit recently faulted the Patent Trial and...more

PTAB Institutes IPR on Humira Patent

As we previously reported, the PTAB instituted IPR on U.S. Patent 8,889,135, which is drawn to a method of treating rheumatoid arthritis (“RA”) with Humira®, a TNFa-inhibitor. Claim 1 is directed to “A method for treating...more

Court Declines to Modify Judgment Based on Collateral Proceedings before the PTAB Finding Claims of Patent-In-Suit Invalid

Summary: In the decision referenced below, the court declined to modify a judgment pursuant to Rule 60(b)(6) of the Federal Rules of Civil Procedure even though the PTAB had found several claims of the patent-in-suit...more

PTAB Motion to Amend Study Reveals Opportunities and Risks

The Patent Trial and Appeal Board (PTAB) recently released its Motion to Amend Study on post-grant proceedings to date (4/30/2016). Of the 4,850 total petitions filed, 1,539 had been instituted and completed trials, and...more

New PTAB Trial Practice Rules Effective May 2, 2016

On April 1, 2016 the PTO published its final rule on Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board.  A small correction to these Amendments was published on April 27.  ...more

IPR Motions to Amend: Rays of Hope Despite Gloomy Statistics

The America Invents Act permits patent owners to move to amend claims of a patent subject to inter partes review. However, attempts to amend claims have been largely unsuccessful to date, and some of the hurdles patent owners...more

Janssen v. Celltrion Hearing Coverage: Motion to Stay Denied; Motion to Amend PO Granted

The District Court for the District of Massachusetts (Judge Wolf) recently decided two pending motions in Janssen v. Celltrion: - ..Plaintiffs’ motion to stay litigation on the ‘471 patent (covering infliximab) pending...more

Judge Uses Institution of IPR to “Bolster” Decision to Overturn Jury’s Finding of Willfulness

A Colorado district court has provided an example of how the decisions of the PTAB in an IPR proceeding can impact district court litigation. In XY, LLC v. Trans Ova Genetics, LLC, Case No. 1:13-cv-00876 (D. Colo.), Judge...more

Intellectual Property Bulletin - Spring 2016

Supreme Court to Weigh In on Damages for Design Patent Infringement - Recent decisions from the U.S. Court of Appeals for the Federal Circuit regarding damages available in design patent cases highlight the court’s...more

Website Labeling Patent not "Financial" Enough for a CBM

Covered Business Method (CBM) petitions are limited to patents relating to “a financial product or service.” CBM petitions are generally favored by defendants over Inter Partes Review (IPR) petitions by allowing a defendant...more

U.S. Patent Trial and Appeal Board Designates Five New Post-Grant Review Decisions as “precedential” and Thus Binding on the Board

On May 9, 2016, the Patent Trial and Appeal Board (PTAB) designated as “precedential” four Inter Partes Review (IPR) decisions and one Covered Business Method (CBM) Patent Review decision. This almost triples the total number...more

Breaking News: PTAB Institutes IPR on Humira® Patent

On May 17, 2016, the PTAB instituted IPR proceedings on claims 1-5 of U.S. Patent No. 8,889,135, drawn to a method of treating a rheumatoid arthritis patient with a TNFa-inhibitor. Humira®, marketed by Abbvie, is allegedly...more

PTAB Discretion Under 325(d) in Post-Grant Proceedings

The PTAB has interpreted the statutes and rules as giving it broad discretion as to whether to institute inter partes review. Under 35 U.S.C. § 325(d), the PTAB may reject a petition because “the same or substantially the...more

Federal Circuit Finds Software Patent Not Abstract

Reversing a district court holding, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit ruled that two patents directed to a method for organizing data in a computer database did not claim an unpatentable...more

Update on Patent Eligibility Decisions for First Quarter, 2016

Here are the updated numbers for #Alicestorm in the first quarter of 2016. First, the overall trend of decisions...more

PTAB Practice Update: Amended Rules of Practice for Trials before the PTAB Now in Effect

Effective May 2, 2016, the United States Patent and Trademark Office (USPTO) has amended the existing consolidated set of rules of practice for trial proceedings before Patent Trial and Appeal Board (PTAB), including inter...more

PTAB Designates Five Decisions as Precedential

To date, the PTAB has been stingy in its designation of panel decisions as “precedential.” Indeed, before now, only 3 decisions in the AIA era had been designated as precedential. That number increased dramatically on May 10,...more

Eastern District of Texas Finds Website Labeling Patent Invalid Under §101

Nearly one third of all patent cases filed in the United States are heard by a single judge - J. Rodney Gilstrap of the Eastern District of Texas. Many of these cases involve e-commerce or other internet-based patents such...more

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