Patent Trial and Appeal Board

News & Analysis as of

PTAB Denies Motion to Amend a Motion to Amend; Reason: Delay

Tandus Flooring, Inc. v. Interface, Inc. - In response to patent owner’s request to file a motion to amend a motion to amend made approximately one month before oral hearing, the U.S. Patent and Trademark Office’s...more

IP|Trend: Inter Partes Review: Is it Litigation or Something Else? [Video]

For two years we’ve seen the inter partes review process play out. What are the procedures like? Does it look like litigation or more like a foreign planet that IP litigators would not recognize? Attorneys Cyrus Morton and...more

PTAB Shows a Willingness to Intervene in Deposition Disputes

Experienced district court litigators are reluctant to “call the judge” when a dispute arises during a deposition. Judges do not want to take the time to deal with mundane discovery disputes and parties do not want to get on...more

Additional Discovery Relating to Real Party in Interest

In VMware, Inc. v. Good Technology Software, Inc., IPR2014-01324, Paper 11 (October 20, 2014), the Board allowed the patent owner to move for additional discovery regarding the real party in interest, one of the few topics...more

Movants Face a High Bar to Succeed on Motions to Amend

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. - In response to a patent owner’s motion to amend its claims in an inter partes review (IPR) petition, the U.S. Patent and Trademark Office’s (USPTO) Patent...more

PTAB Disqualifies Art as Being Non-Analogous to Claimed Invention

A limited number of cases, to date, have dealt with the issue of analogous prior art in an obviousness analysis. In Schott Gemtron Corp. v. SSW Holding Co., IPR2014-00358, the Board addressed this type of issue, finding in...more

Post-Grant Insights: The Preparation and Pace of the PTAB [Video]

The motions that are filed at the U.S. Patent Trial and Appeal Board all need to be authorized in advance. In other words, attorneys and their clients have to request a phone conference and there's a very active practice of...more

PTAB Designates Two Recent Decisions as Informative

Garmin Int’l, Inc., et al. v. Cuozzo Speed Technologies LLC; Idle Free Systems, Inc. v. Bergstrom, Inc. - The Patent Trial and Appeal Board (Board) recently designated as “informative” two decisions earlier released...more

Patent Owner Allowed to Request Discovery about Petitioner’s Testing

In Seoul Semiconductor Co., Ltd. v. Enplas Corporation, IPR2014-00605, Paper 13 (October 16, 2014), the Board authorized the Patent Owner to move for additional discovery about testing that Petitioner conducted. ...more

Motions to Amend Hard to Come By

Zodiac Pool Systems, Inc. v. Aqua Products, Inc. - In a Final Written Decision the Patent Trial and Appeal Board (PTAB) found all instituted claims unpatentable and denied patent owner’s motion to amend claims. Zodiac...more

Board Gives Refresher Course on Objecting to Evidence

In Mitsubishi Plastics, Inc. v. Celgard, LLC, IPR2014-00524, Paper 17, )October 15, 2014), the Board gave a refresher course on objecting to evidence supporting a Petition. ...more

PTAB Requires Additional Showing for Cross-Examination If Testimony Was Prepared for Another Proceeding

A recent order from the Patent Trial and Appeal Board (“Board”) in an inter partes review illustrates how the Board may handle situations where a party seeks to depose a declarant whose testimony was submitted through a...more

Cambridge Assoc., LLC v. Capital Dynamics (PTAB 2014); PNC Bank v. Secure Axcess, LLC (PTAB 2014)

As the fallout of the Supreme Court's Alice Corp. v. CLS Bank decision propagates through the USPTO and lower courts, many patent applications and patents directed to business methods are being rejected or struck down for...more

PTAB Offers Guidance Regarding Discovery in Inter Partes Reviews

Still confused about how much discovery you will be able to obtain in an IPR? Fear not, as two of the PTAB’s Administrative Patent Judges have weighed in with a primer on inter partes review discovery. ...more

Don’t Try to Barnstorm Proof of Printed Publication

The PTAB recently denied institution of inter partes review based on a petitioner’s failure to prove that a document was indeed a printed publication qualifying as prior art to the patent at issue. ...more

CBM Review Cannot Proceed if Petitioner Filed Civil Suit Challenging Patent’s Validity Prior to Filing Review Petition

SecureBuy LLC v. Cardinal Commerce Corp. - Addressing the circumstances under which a Covered Business Method (CBM) patent review may proceed, the U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeal...more

Rehearing Denied in Three Derivation Proceedings

In Catapult Innovations Pty Ltd. v. adidas AG, DER2014-00002, Paper 21, DER2014-00005, Paper 15 and DER2014-00006, Paper 15 (October 15, 2014), the Board denied rehearing of the Board’s decision denying institution of the...more

First Final CBM Decision Invalidates Patent Under § 101

U.S. Bancorp v. Retirement Capital Access Management Co. - In the first final written decision issued in a Covered Business Method (CBM) proceeding, the Patent Trial and Appeal Board (PTAB, the Board) ruled that it has...more

The PTAB finds that the petitioner did not show that a patent claiming internet-based transactions is not a technological...

In GSI Commerce Solutions, Inc. v. Lakshmi Arunachalam, GSI filed a petition seeking covered business method patent review of U.S. Patent No. 8,346,894 relating to "facilat[ing] real-time two-way transactions, as opposed to...more

PTAB Getting Tough on Petitions Seeking to Circumvent Page Limit

Old habits are hard to break. Patent attorneys love to put forth every argument in their arsenal and let the chips fall where they may. Problem is, Congress set up inter partes review procedures to ensure a just, efficient...more

Post-Grant Insights: The Impact of PTAB Appeals on the Federal Circuit [Video]

The Federal Circuit could receive a thousand appeals per year from decisions of the Patent Trial and Appeal Board (PTAB). That means that within one year we could effectively expect a doubling in the patent appeal load in the...more

PTO Decision Not to Institute IPR Is Final and Not Appealable

ZOLL Lifecor Corp. v. Philips Electronics North America Corp. - Effectively reiterating a decision from earlier this year, the U.S. Court of Appeals for the Federal Circuit granted a patent owner’s motion to dismiss an...more

Board Disagrees with Claim Construction of Prior Proceeding Before the PTO

One of the more disheartening trends to Patent Owners in inter partes review proceedings is the strong willingness of the PTAB to give little or no deference to prior Patent Office proceedings relative to the patent-at-issue....more

PTAB - Ford is not barred from challenging a patent on a hybrid vehicle based on the unproven assertion that it breached an...

In Ford Motor Company v. Paice LLC & The Abell Foundation, Inc., Ford filed a petition seeking inter partes review of U.S. Patent No. 8,214,097 relating to a hybrid vehicle having, among other things, both an internal...more

To Stay or Not to Stay…

The Federal Circuit recently decided its second case on the issue of staying a district court patent infringement litigation pending Covered Business Method (CBM) review. In Benefit Funding Systems v. Advance America Cash,...more

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