Blogs, Commentary & News

PTAB’s alternative claim construction saves the day


Alternative claim constructions are often presented in IPR proceedings. Addressing alternative constructions in the final written decision may help the PTAB avoid reversals on appeal. That was the case in Arendi v. Google, where the Federal Circuit rejected the PTAB’s primary claim construction but affirmed based on an alternative claim construction discussed in the decision. In […]

Federal Circuit affirms Board’s grant of adverse judgment based on pre-institution disclaimer


Today, the Federal Circuit affirmed a Board decision of adverse judgment against a Patent Owner based on the pre-institution disclaimer of challenged claims. In IPR2016-00917, Arthrex (Patent Owner) filed a preliminary response requesting denial of the petition based on the disclaimer of all challenged claims  and specifically stating that it was not requesting adverse judgment. In […]

Patent Owners Now Can Appeal Time-Bar Decisions (No Shenanigans Required)


On January 8, 2018, the en banc Federal Circuit in Wi-Fi One v. Broadcom (Wi-Fi II), reversed its September 2016 panel decision in Wi-Fi I, opening the door for appellate review of Section 315(b) time-bar decisions in IPR proceedings. Previously, patent owners had no recourse if they were dissatisfied with the PTAB’s application of the Section […]

Patent Owner sinks infringement theory with statements made in IPR


An IPR petition that results in a final written decision finding all challenged claims unpatentable is unquestionably a success. But that’s not the only measure of success for IPR proceedings. In IPR2017-00588 (Nokia v. Huawei), T-Mobile, a real-party-in-interest to the IPR, appears to have found success long before the final written decision. On September 9, 2017, […]

Sovereign immunity requires dismissal of University of Minnesota, but IPR proceeding will continue as to co-owner Toyota


Several Board decisions have issued this year finding public universities exempt from IPR proceedings because of the sovereign immunity clause of the 11th Amendment to the U.S. Constitution. See, e.g., Covidien v. University of Florida Research Foundation. In a recent decision, another university was dismissed from a pending IPR. This time, however, the IPR proceeding will […]

Failure to challenge “new” arguments during an IPR proceeding may waive APA procedural objections on appeal


In Securus Techs. v. Global Tel*Link Corp., the Federal Circuit rejected a patent owner’s argument that the PTAB improperly considered new arguments raised in the petitioner’s reply brief, in part because the patent owner did not object during the IPR proceeding. In Securus, the Federal Circuit reviewed a pair of final written decisions involving U.S. Patent […]

Uncertainty is the only certainty when it comes to IPR estoppel


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”


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


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


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 […]