Blogs, Commentary & News

Obviousness at the PTAB: Use common sense with care.


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?


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 […]

Put it all in the Petition, and with particularity. PTAB authority is limited to unpatentability theories spelled out with specificity in the petition.


On July 25, 2016, the Federal Circuit reversed a PTAB finding of unpatentability because the decision was based on unpatentability theories never presented by the petitioner and that were not supported by the record. In re: Magnum Oil Tools Int’l, No. 2015-1300 (Fed. Cir. July 25, 2016). The proceeding began when McClinton Energy Group filed […]

Post Grant Review on the rise?


Post Grant Review (PGR) has technically been available as an option since September 16, 2012. But since only AIA patents are eligible for PGR, it wasn’t until 2015 that PGR-eligible patents began appearing in significant numbers. Today, many of the patents that issue are eligible for PGR. Although the number of PGR petitions filed each year […]

Oregon beer growler patent duel to proceed on multiple fronts


Drink Tanks Corporation sued GrowlerWerks, Inc. last November for patent infringement based on its sale of growlers, including the uKeg 64 product shown below. Earlier this year, the case was transferred from Delaware to Oregon district court. On June 2, 2016, GrowlerWerks took the fight to the U.S. Patent and Trademark Office (PTO) by filing a […]

Debut of new PTAB filing and case management system – PTAB E2E


The “PRPS” e-filing and case management system for post-grant proceedings was retired this past weekend.  The new system, PTAB End to End (PTAB E2E), provides significant improvements over the former PRPS system. The new and improved features of PTAB E2E include: Additional search filters, including the ability to search proceedings by party name, type of […]

Supreme Court issues Cuozzo decision: BRI stands; institution decisions not reviewable


Earlier today, the Supreme Court issued its decision in Cuozzo.  The decision preserves the status quo for PTAB trials by (1) confirming that decisions to institute trial by the PTAB are not reviewable and (2) finding that the PTAB reasonably acted within its rulemaking authority in construing claims under the broadest reasonable interpretation (BRI) standard. Institution Decision Not Reviewable:  […]

Oral Arguments heard by Supreme Court in Cuozzo Speed


The Supreme Court heard oral arguments yesterday in Cuozzo Speed Technologies v. Lee, a case that challenges the appropriateness of broadest reasonable interpretation (BRI) in IPR proceedings and the judicial reviewability of institution decisions. The majority of the time was spent on the BRI question. On this issue, the leanings of the justices appeared to […]

Can you work in a group? – Motions to amend and the duty of candor (PTAB decision)


In what could become a more common occurrence, the PTAB granted patent owner Tire Hanger’s motion to amend, allowing five new claims.  Issued the same day that the Supreme Court heard oral arguments in Cuozzo, the PTAB Order helps clarify a patent owner’s duty of candor when arguing the patentability of new claims brought in […]

Motions to Amend – The Federal Circuit discusses the Who (has the Burden), What (Prior Art needs to be distinguished), and How (does the PTAB need to address secondary considerations)


In Nike, Inc. v. Adidas AG, decided February 11, 2016, the Federal Circuit clarified the requirements for proposing substitute claims in IPR proceedings. In the IPR proceeding subject to the appeal, the PTAB granted Nike’s motion to cancel claims 1-46, but denied its motion to substitute claims 47-50 finding that Nike failed to establish patentabilty […]