News & Analysis as of

Patent Validity Patent Trial and Appeal Board

Oil States Energy and SAS Institute: SCOTUS to Review Inter Partes Reviews

by Revision Legal on

As we recently discussed with respect to the proposed STRONGER Patents Act of 2017, legal debate continues to swirl around inter partes reviews. The US Supreme Court has entered the ring recently by accepting certiorari on...more

With Sovereign Immunity, the McCaskill Bill, and Oil States, Big Changes Might Be in Store for Inter Partes Review

When the American Invents Act was passed in 2011, most of us saw the inter partes review process as a streamlined, relatively inexpensive procedure that would permit accused infringers, especially those accused by...more

Federal Circuit Clarifies the Requirements for a Teaching Away by the Prior Art

In a precedential opinion issued on October 11, 2017, the United States Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeals Board’s (“PTAB”) finding of non-obviousness where the prior art taught...more

The PTAB Authorizes Additional Motion To Amend Briefing in View of Aqua Products

by Knobbe Martens on

The Board authorized petitioner Kingston to file a Response to the patent owner’s Reply to petitioner’s Opposition to Motion to Amend, based on the Federal Circuit’s en banc holding that the burden to establish...more

It May Have Just Gotten a Little Easier to Amend Claims in an IPR

A Factionated Federal Circuit Holds that Petitioner has the Burden to Show Unpatenability - In Aqua Products, Inc., v. Matal, [2015-1177] (October 4, 2017), a plurality of the Federal Circuit en banc held that §316(e)...more

Federal Circuit Places The Burden Of Persuasion For Motions To Amend In IPRs On Petitioners

by Knobbe Martens on

The Federal Circuit issued an en banc decision instructing the PTAB to assess patentability of amended claims in IPR proceedings without placing the burden of persuasion on the patent owner. Aqua Products, Inc. v. Matal, No....more

Petitioners Bear Burden Of Proving Claims Amended During IPR Unpatentable . . . For Now

by Jones Day on

In yesterday’s decision in Aqua Products, Inc. v. Matal, No. 15-1177 (Fed. Cir. Oct. 4, 2017) (en banc), the Federal Circuit issued five opinions, spanning 148 pages, addressing the question of who bears the burden of proving...more

Not Every Instance of an Agency Reaching Inconsistent Outcomes in Similar, Related Cases will Necessarily be Erroneous

In Vicor Corp. v. Synqor, Inc., [2016-2283] (August 30, 2017) the Federal Circuit affirmed in part, vacated in part, and remanded the Board’s decisions in two reexaminations, one in which the Board found that certain claims...more

Federal Circuit Concurring Opinion Asks Whether the Exception To One-Year Time Bar For Filing Inter Partes Review Petitions Via...

by Brinks Gilson & Lione on

In Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., No. 2016-2321 (Fed. Cir. Aug. 22, 2017), a concurring opinion by Judges Dyk and Wallach questioned whether petitioners may use joinder to circumvent time bar...more

Interplay Between “Technological Invention” and “Significantly More” in PTAB CBM Review

by Knobbe Martens on

On July 18, 2017, the United States Patent and Trademark Office Patent Trial and Appeal Board (“PTAB”) instituted a covered business method (“CBM”) patent review for U.S. Patent No. 8,955,029 (“the ’029 patent”) on grounds of...more

No Stay of Remedial Orders Even After PTAB Finds Claims Unpatentable

by Jones Day on

The ITC has dealt a significant blow to the use of Inter Partes Review as a defense to a Section 337 investigation. In an order issued this week, the Commission denied a request to stay remedial orders that are currently on...more

Federal Circuit Finds That Fetal Diagnosis Claims Survive Written Description Attacks

by Knobbe Martens on

Stanford University v. The Chinese University of Hong Kong. Federal Circuit Appeal No. 2015-2011. Decided June 27, 2017. In an appeal from the Patent Trial and Appeal Board (PTAB), the Federal Circuit held that claims...more

Design Patents at the PTAB?

by Jones Day on

In the wake of the high-profile dispute in Apple v. Samsung, design patent procurement and enforcement activity has increased significantly. But practitioners may not appreciate that design patent validity can be attacked...more

PTAB Invalidates Two Cisco Patents Found Valid and Infringed at the ITC

The Patent Trial and Appeal Board (“PTAB”) issued Final Written Decisions regarding Cisco’s U.S. Patent Nos. 6,377,577 (the “’577 Patent”) and 7,023,853 (the “’853 Patent”) on May 25, 2017 and U.S. Patent No. 7,224,668 (the...more

Estoppel in CBMR is Both Reviewable and Determined on a Claim by Claim Basis

In Credit Acceptance Corp. v. Westlake Services, [2016-2001](June 9, 2017), the Federal Circuit affirmed the PTAB decision that Westlake was not estopped to bring a Covered Business Method Review challenge to U.S. Patent No....more

Supreme Court to Hear Another IPR Case — SAS Institute v. Lee

The Supreme Court has granted certiorari in another Inter Partes Review dispute, this time in SAS Institute v. Lee. The Court will decide whether the Patent Trial and Appeal Board may properly institute partial review (i.e.,...more

How Far Is Too Far? Institution Decision to Final Written Decision

by Brinks Gilson & Lione on

In making a final written decision of AIA proceedings, the Patent Trial and Appeal Board (“the Board”) is not bound by findings made in an institution decision. In three recent decisions, the Federal Circuit considered the...more

Potential Impact of the Supreme Court’s Decision to Review the PTAB’s Practice of Issuing Partial Final Written Decisions in...

In a case with potential wide-ranging ramifications for patent validity challenges, on May 22, 2017, the Supreme Court granted a writ of certiorari in an appeal from an inter partes review (“IPR”) decision, SAS Institute v....more

Supreme Court Will Decide Whether the PTAB Must Address All Claims Challenged in a Petition

by Knobbe Martens on

The Supreme Court granted a petition for writ of certiorari to address whether the PTAB is required to issue a final written decision with respect to the patentability of every claim challenged by a petitioner in SAS...more

Merely Because Petitioner Changes its Mind is not Enough to Stop Inter Partes Reexamination

In In Re: AT&T Intellectual Property II, L.P., [2016-1830] (May 10. 2017), the Federal Circuit affirmed the PTAB determination in Inter Partes Reexamination, that the claims of U.S. Patent No. 7,454,071, directed to methods...more

Why Design Patents Are Surviving Post-Grant Challenges

As of January 2017, the institution rate for Patent Trial and Appeal Board trials involving design patents was 37 percent. That is significantly lower than every other technology area and makes design patents the only...more

PTAB: No Estoppel Because A Skilled Searcher Could Not Have Found Company Brochures

by Knobbe Martens on

In a Final Written Decision in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2016-00130, Paper 35 (P.T.A.B. May 8, 2017), the PTAB found that petitioner Johns Manville (JM) was not estopped from raising its own company...more

PTAB Provides Another Estoppel Datapoint — No Estoppel for Petitioner Using Its Own Documents

In Inter Partes Review (IPR) proceedings, the estoppel provision of 35 U.S.C. § 315(e)(1) prevents the petitioner from challenging the validity of a patent in an IPR on any “ground that the petitioner raised or reasonably...more

Federal Circuit Reverses-in-Part PTAB’s IPR Decisions for Wasica’s Tire Pressure Monitoring Patents

by Knobbe Martens on

The Federal Circuit affirmed-in-part and reversed-in-part the PTAB’s final written decisions on Wasica’s tire pressure monitoring patents in Wasica Finance GmbH v. Continental Automotive Sys., Inc., No. 2015-2078 (Fed. Cir....more

PTAB Not Bound By Prior Court Decisions Upholding Exelon Patents

by Foley & Lardner LLP on

In Novartis v. Noven Pharmaceuticals, Inc., the Federal Circuit affirmed the USPTO Patent Trial and Appeal Board (PTAB) decisions invalidating certain claims of two Orange Book-listed Exelon patents. This decision has...more

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