Patent Trial and Appeal Board

News & Analysis as of

PTO Announces Current and Anticipated "Quick-Fix" Changes to PTAB Practice

On Friday, March 27, Director Lee issued a statement on the PTO Blog, indicating several current and proposed “quick-fix” rule changes. Immediate changes include nearly doubling the number of pages for a motion to amend to up...more

Board Discusses Difference Between Supplemental Evidence and Information

Still confused by the difference between supplemental evidence versus supplemental information? Let’s try this again….In Norman International, Inc. v. Andrew J. Toti Testamentary Trust, Russell L. Hinckley, Sr. (Co-Trustee)...more

PTAB Rules Lab Notebooks Insufficient to Prove Conception and Reduction to Practice

Swearing behind a reference is an enticing option for a Patent Owner, but the Board has again reminded parties that rigorous—and admissible—proof of conception and reduction to practice is still necessary....more

Use Wayback Machine with Caution: PTAB Excludes Website Printouts from Wayback Machine

In a decision on the patent owner’s motion to exclude evidence, the PTAB excluded certain website printouts from the Wayback Machine as lacking authentication. ...more

To File or Not to File (Before the TTAB) – Supreme Court Holds TTAB Decisions Can Have Preclusive Effect in Federal Court

In its second trademark decision this term, the U.S. Supreme Court ruled that certain findings by the Trademark Trial and Appeal Board (TTAB) relating to whether there is a “likelihood of confusion” between trademarks can...more

Tips for Effectively Organizing PTAB Appeals Brief – Claim Grouping

Filing an appeal brief with the Patent Trial and Appeal Board (PTAB) can be an effective way to advance prosecution and secure allowable claims. Last November, we summarized Tips for Writing Effective PTAB Briefs to help...more

PTAB Declines to Limit Claim Based on Disclosure of Only One Embodiment

The effect of the Broadest Reasonable Interpretation claim construction standard in inter partes review proceedings, forcing a decision that may be different than what could have been expected in district court litigation,...more

Recent IPR Guidance From a Trio of Forums

As inter partes review (IPR) practice continues to develop and practitioners feel their way around the edges, the last month brought helpful guidance from a trio of forums: the Federal Circuit, the Central District of...more

PTAB Is Unimpressed by Over-Lawyering - Medtronic, Inc. v. Norred

Addressing a patent owner’s objections to demonstrative exhibits, the U.S. Patent and Trademark Office’s (PTO’s) Patent Trial and Appeal Board (PTAB) overruled the objection of the patent owner’s representative and encouraged...more

Untimely Presentation of Updated Mandatory Notice Is Not a Cause for Termination - Valeo North America, Inc. v. Magna Electronics...

Addressing a petitioner’s untimely Updated Mandatory Notice following a merger, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) denied a patent owner’s motion to terminate an inter...more

Reduced Deposition Time in Related AIA Proceedings - Petroleum Geo-Services Inc. v. WesternGeco LLC

In an order regarding deposition times for expert witnesses in three related inter partes reviews (IPRs), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) ruled that total deposition time...more

Not So Fast: Split Federal Circuit Panel Sided with PTO on Novel IPR Issues

In In re Cuozzo Speed Technologies, LLC, the first ever appeal of the final written decision from an inter partes review (“IPR”) before the Patent Trial and Appeal Board (“PTAB” or the “Board”), the Federal Circuit decided...more

IP Newsflash - March 2015 #2

DISTRICT COURT CASES - Patent Misuse is Not a Stand-Alone Cause of Action - Plaintiffs Continental Automotive GmbH and Continental Automotive Systems, Inc. (collectively Continental) filed a complaint iBiquity...more

PTAB Excludes Documents Corroborating Publication Date as Hearsay but Admits Librarian Testimony - Toyota Motor Corporation v....

In a final written decision, the U. S. Patent and Trademark Office Patent (PTO) Trial and Appeal Board (PTAB or Board) granted in part the patent owner’s motion to exclude certain documents purporting to corroborate the...more

You Can’t Win if You Don’t Play - Librestream Technologies, Inc. v. Thomason

In two related final written decisions, the U.S. Patent and Trademark Office (PTO) Patent Trial and Appeal Board (PTAB or Board) invalidated numerous claims across two separate patents after the patent owner decided to not...more

Expert Witness Testimony Normally Improper for Preliminary Response - B/E Aerospace, Inc. v. Mag Aerospace Industries, LLC

Clarifying what is impermissible “new” evidence for a Patent Owner Preliminary Response in an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) ordered that the patent owner’s exhibit, in the form...more

Deputy Director Provides Keynote at PTO Day

One day after the U.S. Senate confirmed her nomination as Director of the U.S. Patent and Trademark Office, Deputy Director Michelle Lee provided the luncheon address at the 25th Annual Conference on USPTO Law and Practice...more

Board Disallows Later IPR Petition Directed at Previously-Challenged Patent

3919013_sIn almost two-and-a-half years of IPR practice, the Board has been more than willing to reconsider arguments that have previously been presented to the Patent Office, via examination, reexamination, or reissue. In...more

PTAB Designates Recent Ruling as Information: Proposed Complaints Do Not Trigger the Time-Bar Under § 315(b) - TRW Automotive US...

In a ruling recently designated as informative, the U.S. Patent and Trademark Office’s (PTO’s) Patent Trial and Appeal Board (PTAB or Board) rejected a patent owner’s argument that the petitions were time-barred, finding the...more

POSITA Motivated to Pursue Clinical Development of Therapy Disclosed in Prior Art Despite Potential Safety and Efficacy Hurdles

The PTAB recently held that the challenged claims in two patents assigned to Genzyme and one patent assigned to Duke University on methods for treating Pompe disease are invalid. ...more

Claims Can Be Amended in IPR – Really! - Riverbed Technology, Inc. v. Silver Peak Systems, Inc.

In just the second instance since America Invents Act (AIA) / post-grant reviews became available, the Patent Trial and Appeal Board (PTAB or Board) allowed a patent owner to substitute new claims in its patents in the course...more

Tangible Claim Elements Failed to Save Abstract Business-Method Patent - Dell Inc. v. Disposition Servs. LLC

Further clarifying its views on subject-matter eligibility, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) determined that a patent describing the disposal of obsolete assets—for example,...more

No Exception for Energy Management Patent—CBM Review Instituted - Opower Inc. v. Cleantech Business Solutions

In its decision to institute a covered business method (CBM) patent review of an energy management patent, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) agreed with the petitioner...more

STRONG Patents Act of 2015 -- An Alternative Patent Reform Bill

Yesterday, Sen. Christopher Coons (D-DE), Sen. Richard Durbin (D-IL), and Sen. Mazie Hirono (D-HI) introduced the "Support Technology and Research for Our Nation's Growth (STRONG) Patents Act of 2015." What is unique about...more

MBHB Snippets: Review of Developments in Intellectual Property Law: Winter 2015 - Vol. 13, Issue 1

In This Issue: - Tips for Developing a Cost-Effective Foreign Patent Strategy - Supreme Court Holds that Trademark Tacking Should be Decided by a Jury in Hana Financial, Inc. v. Hana Bank - Amending...more

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