Blogs, Commentary & News

Uncertainty is the only certainty when it comes to IPR estoppel

03/09/2017

Someday, maybe soon, the Federal Circuit will weigh in on the scope of IPR estoppel for references that were known by a party but not presented in an IPR petition filed by that party. Until that happens, it appears that the manner in which IPR estoppel is applied will continue to vary. Even in the […]

Mild discouragement of combination, without evidence of inoperability, does not amount to a “teaching away”

03/07/2017

Do references that show different—but not mutually exclusive—manners of displaying information “teach away” from using both manners together? Unless there are express statements discouraging the combination or evidence of its inoperability, the answer will likely be “no.” In Meiresonne v. Google Inc., the Federal Circuit affirmed the PTAB’s finding of unpatentability of all challenged claims in IPR […]

Is IPR estoppel losing even more teeth? District Court finds it applies only to instituted grounds

12/26/2016

In a December 19, 2016 decision, Judge Robinson (D. Del.) held that, under current Federal Circuit law, IPR estoppel can only apply to references on which the PTAB institutes trial. Judge Robinson’s decision was in response to plaintiff Intellectual Ventures’ motion for summary judgment that defendant Toshiba is estopped from raising invalidity grounds that it did […]

To avoid running afoul of the APA, patent owners must be permitted to respond to “new” grounds of unpatentability

11/18/2016

In In re: NuVasive, Inc., the Federal Circuit vacated and remanded the Board’s final written decision in IPR2013-0508 for further proceedings. At issue was the Board’s reliance on a prior art figure that was first raised in petitioner’s reply and which the Board did not permit the patent owner to address in the preceding. In […]

Post-Cuozzo, Board Decision Terminating IPR Proceedings Remains Not Appealable

10/24/2016

In Medtronic v Bosch (Oct 20, 2016), a Federal Circuit panel reaffirmed its earlier order dismissing Medtronic’s appeal from a Board decision to terminate IPR proceedings. The Board, after initially instituting inter partes review, had vacated its institution decision and terminated the proceedings on finding that Medtronic failed to satisfy the real-party-in-interest requirements of 35 […]

Federal Circuit maps out two-step approach, decides not to dance: Split panel refuses to review applicability of assignor estoppel to IPRs

09/30/2016

In Husky Injection Molding Sys. v. Athena Automation Ltd., a split panel of the Federal Circuit dismissed a patent owner’s appeal of the PTAB’s final written decision in an IPR where patent owner asserted that institution should have been denied based on assignor estoppel. The majority’s opinion cites the Supreme Court’s Cuozzo decision as setting up […]

Shenanigans aside, time-bar decisions still not appealable; Judge Reyna invites en banc review

09/21/2016

In WiFi v Broadcom, the Federal Circuit confirmed that the Supreme Court decision in Cuozzo did not overrule the prohibition on appellate review of decisions relating to institution of IPR proceedings. Although Cuozzo left open the possibility that certain “shenanigans” (e.g., notice failures that create due process problems) might be reviewable, the Federal Circuit rejected […]

PTAB’s denial of motion to amend was arbitrary and capricious

09/08/2016

The Federal Circuit continues to show interest in the amendment process for PTAB proceedings. In addition to accepting In re Aqua Products for en banc review of the current standards for amending claims in PTAB proceedings, last week the Federal Circuit issued a decision in Veritas Tech. v. Veeam Software Corp., No. 2015-1894 (Fed. Cir. Aug. 30, […]

On remand, PTAB says it did consider an exhibit submitted to show the “state of the art”

09/02/2016

In a decision on remand issued on August 15, 2016, a PTAB panel again found patentable claims 1-30 of Verinata Health’s U.S. Patent No. 8,318,430, directed to methods for determining the presence or absence of fetal aneuploidy in a fetus. This time, the PTAB specifically addressed the applicability of an exhibit to the state of the art, responding […]

En banc Federal Circuit to review standards for amending claims in PTAB proceedings

08/17/2016

On August 12, 2016, the Federal Circuit granted the petition for rehearing filed in In re Aqua Products Inc. and decided that its full panel of judges will consider the PTAB’s current practice for allowing (or, in most cases, not allowing) claim amendments. Amendments in PTAB proceedings are currently guided by the Informative Opinion issued in Idle Free Systems, Inc. v. Bergstrom, […]