Patent Trial and Appeal Board

News & Analysis as of

Cumulative Art Rejections v. Estoppel: Balancing Competing Interests In IPR Petitions

Inter Partes Review, or IPR, is one of the new procedures implemented through the Leahy-Smith America Invents Act that challenges a patent’s validity at the Patent Trial and Appeals Board (PTAB) of the United States Patent...more

Stays Pending Inter Partes Review - New Strategies For The New Rules

As the Patent Trials and Appeals Board (“PTAB”) works through the first wave of filings under the new inter partes review (“IPR”) procedures, district courts are addressing an increasing volume of requests for stays pending...more

IP Newsflash - April 2014

DISTRICT COURT CASES - Rule 11 Sanctions Warranted Due to Plaintiff’s Objectively Unreasonable Claim Construction - A district court in Delaware has granted a defendant’s motion for sanctions against a plaintiff...more

The Complexities of the USPTO Proposed Attributable Ownership Rules

The USPTO proposed attributable ownership rules would require the public disclosure of the “attributable owner” of patent applications and patents. As discussed in this article, the proposed definition of “attributable owner”...more

Board Declines to Make Evidentiary Rulings Before the Final Written Opinon

In Sony Corporation v. Yissium Research Development Company of the Hebrew University of Jerusalem, IPR2013-00218, Paper 35 (April 7, 2014) and IPR2013-00219, Paper 41 (April 7, 2014), the patent owner sought an early ruling...more

Standard For Amending Claims In IPR May Need To Change

The Idle Free decision denied the patent owner’s motion to amend claims on the ground that the patent owner had not proven the patentability of the claims over the prior art. Remarkably, the decision makes no reference to the...more

PTAB Reluctant to Exclude Evidence - Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.

In the final written decisions of two related covered business method (CBM) patent reviews of the same patent, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (Board) sided with the petitioner,...more

Stay Pending Resolution of Covered Business Method Review Denied Where Case Was Narrow and Trial Date Was Already Set

Plaintiff SecureBuy, LLC ("SecureBuy") filed a Motion to Stay Proceedings pending resolution of a Covered Business Methods ("CBM") review at the Patent Trial and Appeals Board ("PTAB"). When the motion was stayed, the PTAB...more

Objective Indicia of Non-Obviousness Proffered by Patent Owner Deemed Insufficient to Establish Nexus

A PTAB panel has rejected a patent owner’s evidence of objective indicia of non-obviousness because it lacked the proper nexus with the claimed subject matter. In its brief, the patent owner had argued that praise by others,...more

PTAB Terminates IPR Sua Sponte Where Claims Indefinite

As dictated by 35 U.S.C. § 311, a petitioner can pursue inter partes review (“IPR”) before the Patent Trial and Appeal Board (“PTAB” or “Board”) based on certain grounds of anticipation or obviousness under 35 U.S.C. §§ 102...more

Inter Partes Review Terminated Where PTAB Found That Challenged Claims Were Indefinite

Petitioner, BlackBerry Corporation and BlackBerry Limited ("Blackberry"), filed a petition on October 30, 2012, for an inter partes review ("IPR") of claims 1-12 of US Patent No. 6,871,048 ("the ?048 patent"). On March 18,...more

Inter Partes Review -- A Look Back

March 16, 2014, marks the eighteen-month anniversary of the inter partes review ("IPR") system of challenging issued patents at the Patent Office. We thought that this would be an appropriate time to look back at the last...more

IP Newsflash - Indefiniteness of Claim Language Forces Board to Terminate Inter Partes Review Proceeding

Instead of issuing a final written order regarding patentability, a PTAB panel has terminated an inter partes review proceeding because it was unable to determine the scope of the claims at issue...more

Trio of Final Written Decisions Go Against Patent Owner

Early results of Inter Partes Review proceedings continue to favor Petitioners as all challenged claims in a threesome of Columbia University patents have been cancelled by the PTAB in Illumina, Inc. v. The Trustees of...more

Victoria’s Secret Defends Dream Angels?

How important is the DREAM ANGELS brand to Victoria’s Secret? Victoria’s Secret has a robust portfolio of federally-registered trademarks to protect the DREAM ANGELS sub-brand for undergarments and a line of personal...more

Means Plus Function Treatment Does not Apply Where Claim Element Conveys Known Structure to the Skilled Person

The Federal Circuit in Enocean GmbH v. Face International Corporation No. 2012-1645 (Fed. Cir. Jan. 31, 2014) reviewed claims which were found by the U.S. Patent and Trademark Office, Board of Patent Appeals and Interferences...more

Privity and Its Strategic Implications in PTAB Trials

The creation of the Patent Trial and Appeal Board (“PTAB”) within the U.S. Patent and Trademark Office (“PTO”) as a forum for hearing challenges to the validity of issued patents has attracted significant interest from...more

PTAB Invalidates Patent Despite Settlement

As more and more AIA post-grant review decisions are being issued, practitioners should be aware that the Patent Trial and Appeal Board (PTAB) may rule on the validity of the patent at issue despite settlement by the parties....more

Idle Free v. Bergstrom - Turning the Tables on Patent-Holders

The “America Invents Act” (“AIA”), signed into law on September 16, 2011, dramatically reformed existing patent laws. One particularly important provision replaced Inter Partes Reexamination, a form of post-grant review, with...more

Arbitration Proceeding Do Not Trigger One-Year SOL for Inter Partes Review - Certain Computers and Computer Peripheral Devices,...

In response to a patent owner’s post-institution motion to terminate an inter partes review (IPR) proceeding, an expanded panel of the Patent Trial and Appeal Board (PTAB) gave further definition to the triggering events of...more

Rehearing Will Only Be Granted Where the Board Misapprehended or Overlooked Something

In Ube Maxell Co., Ltd. v. LG Chem, Ltd., [IPR2013-00471], Paper 29, (February 28, 2014) the Board again denied rehearing of one its decisions to Institute Inter Partes Review. ...more

Well-Known Technology Is Not a “Substitute Fulfillment” for Patent Eligible Subject Matter - CRS Advanced Technologies, Inc. v....

In a Covered Business Method (CBM) post-issuance review, the Patent Trial and Appeal Board (PTAB) cancelled all claims under review, concluding that the challenged claims were directed to non-eligible subject matter directed...more

Covered Business Method Review Is All or Nothing - Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.

In the final written decision of the second covered business method (CBM) patent review, the Patent Trial and Appeals Board (PTAB) cancelled all claims under review, noting that instituting a CBM review based on a...more

Petition for Certiorari Filed Regarding Preclusive Effect of Likelihood of Confusion Findings by the Trademark Trial and Appeal...

In advising clients and making strategic decisions about whether to bring or defend inter partes proceedings before the Trademark Trial and Appeal Board ("TTAB"), trademark practitioners need to consider carefully whether...more

Patent Powered Back on By Restrictive Reading of § 112, ¶ 6 - EnOcean GmbH v. Face International Corp.

Reversing the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences, the U.S. Court of Appeals for the Federal Circuit held that EnOcean’s patent claims for a self-powered wireless switch did not invoke...more

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