Blogs, Commentary & News

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, […]

Obviousness at the PTAB: Use common sense with care.

08/12/2016

On August 10, 2016, in Arendi v. Apple et al., the Federal Circuit reversed a final written decision in which the PTAB held that claims were unpatentable as obvious, finding that the PTAB had improperly relied on common sense to fill a gap in the primary prior art reference. The court acknowledged that, post-KSR, common […]

Obviousness prior art: From many comes one?

07/29/2016

On July 27, 2016, the PTAB issued five written decisions finding all claims of six patents assigned to Jazz Pharmaceuticals Inc. unpatentable. Each of the patents related to tracking and controlling the distribution of sensitive prescription drugs that have the potential to be abused, misused, or diverted. An interesting aspect of these decisions is the collective […]