Patent Trial and Appeal Board

News & Analysis as of

PTAB's 1st Preliminary Reply And Surreply Under New Rules

The most recent Patent Trial and Appeals Board rule changes, effective May 2, 2016, allow petitioners to seek leave to file a reply to a patent owner preliminary response upon a showing of good cause. Amendments to the Rules...more

Federal Circuit Holds the PTAB Must Apply Narrower Phillips Claim Construction Standard to Patents that Expire During Pendency of...

In In re CSB-System Int’l, Inc., No. 15-1832 (Fed. Cir. Aug. 9, 2016), the Court of Appeals for the Federal Circuit recently held that patents that expire during a pending re-examination before the Patent Trial and Appeal...more

45 Months of Inter Partes Review – By the Numbers (Volume 14)

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

Sally Beauty Holdings, Inc. v. Intellectual Ventures I LLC (PTAB 2016)

Sally Beauty (Petitioner) filed a Petition requesting a review under the transitional program for covered business method (CBM) patents of U.S. Patent No. 5,969,324, owned by Intellectual Ventures I LLC (IV)....more

Federal Circuit Affirms Tygacil Formulation Patent

In Apotex, Inc. v. Wyeth LLC, the Federal Circuit affirmed the decision of the USPTO Patent Trial and Appeal Board (PTAB) finding that Apotex had failed to show that claims directed to a specific formulation of tigecycline...more

The Importance of the Specification in Alice Challenges

It is axiomatic that the claims of a patent describe the invention, and for Alice challenges, define whether an invention is drawn to an abstract idea without an inventive concept. Of course, claims are construed in light of...more

Federal Circuit Emphasizes that an Obviousness Analysis Based on Common Sense Must be Supported by Substantial Evidence and...

A recent decision by the Federal Circuit suggests that relying on “common sense” in analyzing whether a patent is obvious in view of prior art cannot always be based on common sense alone. In a decision providing...more

Arendi S.A.R.L. v. Apple, Inc. – Defining “Common Sense”

For some time, I have wanted to do a post on this recent Fed. Cir. decision (Appeal No. 2015-2073 (Fed. Cir. , August 10, 2016),) in which the Fed. Cir. panel of Judges Moore, Linn and O’Malley (writing) reversed a PTAB...more

PTAB Life Sciences Report

About the PTAB Life Sciences Report: Each week we will report on recent developments at the PTAB involving life sciences patents....more

Is Final Really Final? Alternative Patent Prosecution Routes after a Final Office Action

The prosecution of a patent application before the U.S. Patent and Trademark Office (USPTO) can be a prolonged and costly process. The patent prosecution process can include the issuance of an Office Action by the USPTO and...more

Korea Quarterly - August 2016

Controlling Costs in International Arbitration - Arbitration is an efficient means for resolving business disputes because it offers more flexibility than court proceedings and enables the parties to choose arbitrators...more

Federal Circuit Grants En Banc Review of PTAB Amendment Practice

On August 12, 2016, the U.S. Court of Appeals for the Federal Circuit granted rehearing en banc to appellants in In re Aqua Products, Inc to consider the procedures used by the USPTO Patent Trial and Appeal Board (PTAB) to...more

PTAB Misapplied Common Sense in Finding Claims Obvious

In Arendi S.A.R.L. v. Apple Inc., [2015-2073] (August 10, 2016) the Federal Circuit reversed the PTAB Final Written Decision that claims 1-2, 8, 14-17, 20-21, 23-24, 30, 36-39, and 42-43 of U.S. Patent No. 7,917,843 were...more

“Substantial Evidence” Hurdle is Substantially Difficult to Overcome

One of the less appreciated hurdles to a successful appeal of a Final Written Decision in an IPR proceeding is the “substantial evidence” standard of review the Federal Circuit applies to the Graham factors that underlie a...more

Intellectual Property Bulletin - Summer 2016

Supreme Court Expands Discretion to Award Enhanced Damages for Patent Infringement and Eliminates the Federal Circuit’s ‘Seagate Test’ - In Halo Electronics, Inc. v. Pulse Electronics, Inc., the U.S. Supreme Court...more

Federal Circuit Vacates and Remands PTAB Obviousness Determination Not Supported by Adequate Reasoned Explanation

In In re Warsaw Orthopedic, Inc., 2015-1050, 2015-1058 (August 9, 2016), the Federal Circuit affirmed in part, vacated in part, and remanded the PTAB’s decision in IPR2013-00206 and IPR2013-00208 that claims 1–8 and 17–23 of...more

Humira® Update: Big Guns Take Aim at Top-Selling Biologic

AbbVie Inc.’s Humira® (adalimumab) was the top selling drug in 2015. Unsurprisingly, it is the focus of biosimilar applicants and patent challengers aiming to get into the market. We provide this update on three events...more

A legal look at Patent Trial and Appeal Board decisions and trends: PTAB Statistics - Then and Now

The Inter Partes Review (IPR) and Covered Business Method (CBM) procedures were enacted on September 16, 2012. Since then, the PTAB has released data on a monthly basis to illustrate the trends in the various petitions and...more

In re Aqua Products, Inc. -- CAFC Grants Rehearing En Banc to Consider PTAB Motions to Amend

On Friday, August 13, 2016, the Federal Circuit granted a petition for rehearing en banc filed in the In re Aqua Products, Inc. case to consider two questions related to the PTAB's treatment of Motions to Amend in IPR...more

En Banc Federal Circuit To Review Standards for Amending Claims During AIA Proceedings

In a rare grant of a petition for rehearing en banc, the court decided that an appeal “warrants en banc consideration” of who bears what burden when amending in an IPR. In re: Aqua Products, No. 15-1177, slip op. at 2 (Fed....more

BRI Does Not Apply if Patent Expires Any Time During Reexamination Proceeding

In In Re CSB-System International, Inc., [2015-1832] (August 9, 2016), the Federal Circuit held that the PTAB erred in applying a broadest reasonable interpretation claim construction, instead of a Phillips claim...more

Federal Circuit Provides Guidance on Use of Common Sense in Obviousness Analysis

Last week, in Arendi S.A.R.L. v. Apple, the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) finding of invalidity in an inter partes review that relied on “common sense” to supply a claim limitation that was...more

Federal Circuit To Review IPR Claim Amendment Rules En Banc

The Federal Circuit will rehear en banc the appeal In re: Aqua Products, Inc., No. 2015-1177 to address whether the PTAB’s rules requiring the Patent Owner to demonstrate the patentability of proposed amended claims are...more

In re Magnum Oil Tools Int'l, Ltd. (Fed. Cir. 2016)

McClinton Energy Group filed an inter partes review (IPR) petition against all claims of U.S. Patent No. 8,079,413, owned by Magnum Oil Tools International, Ltd. The USPTO's Patent Trial and Appeal Board (PTAB) instituted...more

The Specter of Alice Looms Large Even in PGRs

On August 3, 2016, the Patent Trial and Appeal Board issued a post-grant review decision that bears one striking similarity to its previous post-grant review decisions, namely invalidation of claims under Alice Corp. Pty. v....more

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