Patent Trial and Appeal Board

News & Analysis as of

Federal Circuit Sends Verinata Patent Back to PTAB – The Import of Background Prior Art In Supplying The Requisite Motivation To...

On November 16, 2015, the Federal Circuit vacated and remanded a Patent Trial and Appeal Board (PTAB, also the “Board”) inter partes review (“IPR”) decision holding that a prior art reference, though not identified as an...more

3 Years of Inter Partes Review – By The Numbers

Welcome to Harness Dickey’s Report on Litigation Practice before the United States Patent Office. Created by the America Invents Act, Inter Partes Review proceedings have already changed the face of patent litigation. Lower...more

Connect the Dots: Petition That Fails to Explain How Prior Art Could Be Combined Can Doom a PTAB Proceeding

While claim charts are often used to compare prior art to challenged patent claims, simply submitting those claim charts as part of a petition to the Patent Trial and Appeal Board (PTAB), without more, could lose your case....more

Federal Circuit Review | November 2015

Federal Circuit Declines to Reverse Invalidity, Noninfringement Holdings - In Spectrum Pharmaceuticals, Inc. v. Sandoz Inc., Appeal No. 2014-1407, the Federal Circuit affirmed the district court’s grant of summary...more

Considerations for Submission of Experimental Evidence to the Patent Trial and Appeal Board

Experimental evidence can be a powerful tool in succeeding in an inter partes review proceeding, particularly in the case where inherent properties of prior art are at issue. As indicated by the requirements of 37 C.F.R. §...more

Two Recent CAFC Opinions Closely Scrutinize PTAB IPR Decisions Upholding Claim Validity For Legal Error

Two opinions that came down this month illustrate the CAFC’s close scrutiny of potential legal errors in PTAB Final Written Decisions.  These decisions underline the benefits of appellants focusing their arguments on legal...more

Get It in Writing: Even Arguments Prompted by PTAB Questions Must Be in the Briefings

The Patent Trial and Appeal Board (PTAB) continues to strictly enforce its rule that "parties are not permitted to raise new arguments at oral hearing," including in situations where the "new" arguments are provided as a...more

Belden Inc. v. Berk-Tek LLC (Fed. Cir. 2015)

Do you want the good news or the bad news first? Well, the good news is that the Federal Circuit has begun reversing PTAB decisions on the merits for IPR proceedings. To be fair, in the Microsoft case, the Federal Circuit...more

PTAB Holds Claims Invalid That Were Held To Be Not Invalid In Litigation Appeal

The Patent Trial and Appeal Board recently held claims in two separate patents to be invalid that were previously held to be not invalid in a litigation appeal. In separate inter partes review proceedings, the PTAB held that...more

Federal Circuit Issues Second Reversal in an Inter Partes Review Finding the PTAB’s Obviousness Analysis to Contain “Legal Errors”...

On November 3, 2015, the Federal Circuit issued Belden Inc. v. Berk-Tek LLC1, a rare precedential opinion reversing a determination by the Patent Trial and Appeal Board (PTAB) in an inter partes review proceeding. This is...more

Inphi Corp. v. Netlist, Inc. (Fed. Cir. 2015)

Many patent attorneys have a visceral, disapproving reaction to negative claim limitations -- elements that specify what a claim does not cover. While a line of Federal Circuit cases has established that negative limitations...more

PTAB’s Ambiguous Language Is Basis For Federal Circuit Vacating PTAB’s Opinion

Yesterday, the Federal Circuit remanded a PTAB decision for just the second time. In Ariosa Diagnostics v. Verinata Health, Inc., the Federal Circuit vacated and remanded the Board’s decision upholding the validity of...more

Board Offers New Technique to Solve an Often-Raised IPR Issue

One panel of the PTAB has introduced a technique that may help solve the oft-raised complaint that a reply brief from Petitioner contains new evidence and/or argument not raised in the Petition. In early decisions, when this...more

Ex parte Jung (PTAB 2015) - Computer-Readable Medium Claims vs. Printed Matter

Most software or computer-related patent applications today include a number of different types of claims, such as method claims, device claims, and computer-readable medium (CRM) claims. Such CRM claims are usually directed...more

PTAB May Allow a Petitioner to Correct An Improper IPR Reply Brief

Last week, the Federal Circuit explained that the Patent Trial and Appeal Board did not err when it allowed a petitioner to revise its Inter Partes Review Reply brief after first cautioning the petitioner that the PTAB may...more

PTAB Says: Abuse of Process and Improper Use Discovery is Moot in Denial of IPR Petition

In a recent decision on yet another inter parties review petition brought by billionaire hedge-fund manager Kyle Bass through one of his Coalition for Affordable Drugs entities, the PTAB denied institution of an IPR against...more

Lessons Learned from a Rare CAFC Opinion on an IPR Matter

To date, the Federal Circuit has issued Rule 36 affirmances in over 80% of the cases it has heard. Thus, when a new, substantive opinion is issued by the Court, it is an opportunity to learn. On November 5th, the Federal...more

Estoppel in the Context of Inter Partes Review Proceedings - Apotex Inc. v. Wyeth LLC

The Patent Trial and Appeal Board (PTAB or Board) interpreted the estoppel provision of 35 U.S.C. § 315(e)(1) to deny institution of inter partes review in a second petition by the same petitioner against the challenged...more

PTAB to Purchasers: “Caveat Emptor” - Esselte AB v. DYMO B.V.B.A.

In a decision to institute inter partes review (IPR) in four separate but related matters, the Patent Trial and Appeal Board (PTAB or Board) found that the patent owner failed to provide sufficient support for its contention...more

Threshold for Institution Is Preponderance of Evidence - Nestlé Purina Petcare Co. v. Oil-Dri Corp. of America

In a decision denying the patent owner’s request for rehearing, the Patent Trial and Appeal Board (PTAB or Board) explained that when instituting an inter partes review (IPR) on obviousness grounds, a petitioner must only...more

Support from Specification Not Enough for Covered Business Method Review - ServiceNow, Inc. v. Hewlett-Packard Company

The Patent Trial and Appeal Board (PTAB or Board) determined that a patent directed to a web services management was not eligible for covered business method (CBM) review under § 18 of the America Invents Act (AIA) and that...more

Can’t Run Away from Your Expert’s Testimony: Board Says Testimony from Another Proceeding Admissible - Edmund Optics, Inc. v....

Addressing the admissibility of testimony from prior proceedings, the U. S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) denied the petitioner’s motion to exclude the prior testimony of its own...more

Standing for CBM Proceeding Only Necessary at Time of the Petition - Westlake Servs., LLC v. Credit Acceptance Corp.

Addressing the issue of whether standing must be maintained throughout a covered business method (CBM) proceeding under the America Invents Act (AIA), the U.S. Patent and Trademark Office’s (PTO’s) Patent Trial Appeal Board...more

Internet-Centric Solution Is More than Moving Online - eBay, Inc. v. PAID, Inc.

Addressing the issue of patent-eligible subject matter in a covered business method (CBM) review, the Patent Trial and Appeal Board (PTAB or Board) found the challenged online action patent to be directed to ineligible...more

Starbucks Brews Successful CBMs - Starbucks Corp. v. Ameranth, Inc.

Addressing patent eligibility for a covered business method (CBM) review under Section 18 of the America Invents Act (AIA), the Patent Trial and Appeal Board (PTAB, the Board) found the patents-at-issue to be eligible and...more

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