Patent Trial and Appeal Board

News & Analysis as of

Federal Circuit Applies "Searching Review" of Stay Pending CBM Proceeding

In Benefit Funding Systems, LLC v. Advance America Cash Advance Centers, Inc., the Federal Circuit upheld the district court’s decision to stay patent infringement litigation while the USPTO Patent Trial and Appeal Board...more

Court Excludes PTAB Decision That Conflicts With Prior Final District Court Judgment

In Affinity Labs of Texas, LLC v. Ford Motor Co., Affinity moved in limine to exclude any reference to the decision of the PTAB regarding an inter partes reexamination filed by a defendant in an earlier case involving a...more

PTAB's Guidelines for Foreign Language Depositions

In the Ariosa Diagnostics v. ISIS Innovation Limited inter partes review, the PTAB set for the guidelines for taking depositions in a foreign language as required by 37 C.F.R. § 42.53(c). In addition to the requirement of...more

PTAB to Apple: No Third or Fourth Bite at the Apple

In inter partes proceeding Apple Inc. v. Rensselaer Polytechnic Institute et al., IPR2014-00320, Petitioner Apple sought a second request for rehearing, before an expanded panel of the PTAB, on the Board's decision not to...more

IP Newsflash - September 2014 #4

Federal Circuit Has Jurisdiction to Decide Non-Patent Causes of Action That Involves a Substantial, Non-Hypothetical Disputed Patent Law Issue - On September 16, 2014, a Federal Circuit panel consisting of Circuit...more

The Board’s Disjointed View of Joinder

In Target Corporation v. Destination Maternity, IPR2014-00508, Paper 20 IPR2014-00509, Paper 19 (September 25, 2014), the Board denied the petitions as barred under 35 USC 315(b),finding that Target could not “join” its later...more

Inter Partes Review – Parties Favor Settlement Over Board Decisions

Now that we have a growing body of statistics on the Inter Partes Review proceedings created by the America Invents Act, it is interesting to see how the proceedings are being resolved. With the significant attention given to...more

PTAB Provides Guidance for Meeting Burden to Show Written Description for Substitute Claim

September 24, 2014 – In a Final Written Decision finding the patentee’s claim 1 unpatentable, the PTAB denied a motion to add a substitute claim that added hundreds of words to challenged claim 1. The PTAB held that the...more

PTAB Continues to Deny IPR Petitions, Based on Arguments Incorporated By Reference

September 22, 2014 – For the second time in a month (see our previous PTAB Highlight regarding IPR2014-00491 below), the PTAB has refused to consider arguments incorporated by reference into an IPR petition. ...more

The Patent Trial and Appeal Board Second Anniversary: Reflections and Strategies For The Years Ahead

What a difference two years can make. In 2012, the America Invents Act (“AIA”) created new proceedings to challenge the validity of claims in issued patents. These proceedings are administered by the United States...more

PTAB Permits Entry of Declaration Testimony in an IPR Without Opposing Party’s Opportunity to Cross- Exam

In a Conduct of the Proceeding Order and Decision Denying Patent Owner’s Motion for Additional Discovery, the PTAB addresses the situation of proffered declaration testimony that was not prepared for the purposes of the inter...more

PTAB Denies Institution of Inter Partes Review of Design Patent, Noting 35 U.S.C. 171 is Not a Proper Basis for IPR

In its decision denying institution of two IPRs, the PTAB outlines how allegedly functional elements of a design patent claim are addressed in an IPR obviousness analysis....more

PTAB Update -- A Review of the First Round of Comments (Part 1)

The USPTO has been seeking feedback on the PTAB trial proceedings established by the Leahy-Smith America Invents Act. A Federal Register Notice from June 27, 2014 contained the "Request for Comments on Trial Proceedings...more

In an IPR Proceeding With Several Listed Petitioners, The Petitioners Must Speak With A Single Voice

In IPR2014-00954, the Patent Trial and Appeals Board ("PTAB") (A.P.J.s Petravick, Deshpande, and Clements) issued a decision regarding the proper identification of lead and backup counsel listed in the powers of attorneys in...more

PTAB Rejects “Unusual” Inventor Testimony That His Own Invention Was Not Reduced To Practice and Finds His Claims Not Unpatentable

In a final written decision, the PTAB found the petitioner failed to prove challenged claims unpatentable and rejected “unusual” inventor testimony about reduction to practice that was opposite the typical situation where...more

IPR Petition Barred Under 35 U.S.C. § 315(b)

The PTAB denied a petition for inter partes review as barred under 35 U.S.C. § 315(b) because the PTAB determined that the petitioner was served with a complaint alleging infringement of the patent more than a year before it...more

No stays for IPRs and CBMs in view of advanced stage of litigation and long PTAB timeline

Intellectual Ventures II LLC v. JP Morgan Chase & Co. et al. Case Number: 1:13-cv-03777 - Summary: In litigation filed June 2013 with a trial anticipated in the summer of 2015, Judge Hellerstein denied JP Morgan...more

Design Patent Case Digest: Dorman Products, Inc. v. PACCAR, Inc.

Decision Date: September 5, 2014 - Court: Patent Trial and Appeal Board - Patents: D525,731 and D526,429 - Holding: Petitions to Institute Inter Partes Review DENIED Opinion: Dorman...more

PTAB Decides Inter Partes Review of Patent at Issue in Ariosa v. Sequenom

On September 2nd, the Patent Trial and Appeals Board (PTAB) entered judgment in an inter partes review styled Ariosa Diagnostics v. Isis Innovation Ltd. (IPR 2012-00022). The Board found that Ariosa demonstrated, by a...more

USPTO Extends Deadline for Comments to Help Improve PTAB Proceedings

If you were planning on letting the U.S. Patent and Trademark Office know how you feel about the use of the "Broadest Reasonable Interpretation" standard for claim construction during PTAB trials or the near impossibility of...more

IP Newsflash - September 2014 #2

Airline Rewards Conversion Method Invalid Under Alice and Bilski - On September 2, 2014, Federal Circuit Judge William Bryson, sitting by designation in the Eastern District of Texas, ruled that two patents on a...more

PGR Report -- The Attack of 35 U.S.C. § 112

Last week, on September 2, 2014, Accord Healthcare, Inc. ("Accord") filed what appears to be the second-ever Post-Grant Review ("PGR") (see Petition). This PGR was for U.S. Patent No. 8,598,219 ("the '219 Patent"), which is...more

PTAB Threatens Sanctions for Unauthorized E-mails

Samsung Electronics Co., Ltd., et al. v. Black Hills Media, LLC - Addressing a patent owner’s unauthorized e-mail arguing for additional discovery and the petitioner’s likewise unauthorized responsive e-mail, an...more

No “Correct” Pronunciation for Trademarks that Are Unrecognized Words

StonCor Group, Inc. v. Specialty Coatings, Inc. - The U.S. Court of Appeals for the Federal Circuit, in affirming a Trademark Trial and Appeal Board (the Board) ruling finding no likelihood of confusion between the...more

Despite Lack of Familiarity with Specific Technology-at-Issue, Industry Expert Not Excluded

The Board continued its reluctance to exclude evidence in inter partes review proceedings in Primera Technology, Inc., v. Automatic Manufacturing Systems, Inc., Final Written Decision, IPR2013-00196 by denying a motion to...more

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