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PTAB Procedures and Rules

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 No. 7,860,222. The claims of the ‘222 patent describe investigative tools and communication monitoring that include such features as:

an investigative tools module in communication with said communication service module operable to allow a user to monitor said communications between individuals and to place event identifiers in association with said communications between individuals, said event identifiers comprise a plurality of bookmarks representing different events of interest …

Or, as more succinctly described by the Federal Circuit, “a system and method for reviewing conversation data for certain events and noting when something of interest happens.”

In two IPR decisions, the Board found all claims unpatentable. In affirming the unpatentability of some claims, the Federal Circuit rejected Securus’ argument that the Board erred in considering arguments raised for the first time in Global’s reply. In doing so, the Federal Circuit took Securus to task for not raising this objection during the IPR proceeding.

Moreover, it is incumbent upon the party complaining of some procedural violation—such as the inclusion of improper rebuttal in a reply brief—to first raise the issue below. … Securus presents no evidence that it availed itself of the procedures for filing a sur-reply, a motion to strike, or a conference call to challenge this allegedly improper argument.

This decision emphasizes the importance of promptly challenging the introduction of arguments that stray from the theories set forth in the petition. The failure to act during the proceeding may be held against you on appeal.

The Federal Circuit also reversed and remanded as to some claims because the Board “failed to articulate any reason supporting its decision.” Referring to its past decisions in Nuvasive and Cutsforth, the Federal Circuit again indicated that “it is not adequate [for the Board] to summarize and reject arguments without explaining why the [Board] accepts the prevailing argument.” Whether this will affect the Board’s prior finding of unpatentability of these claims remains to be seen. Although such reversals result in new decisions by the Board, they rarely result in new outcomes.

Posted on 05/09/2017 by Deakin Lauer

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 August 2013, Medtronic filed an IPR petition challenging the patentability of twenty-two claims of a patent owned by NuVasive (U.S. Patent No. 8,187,334) and directed to implants for spinal fusion surgery. In its reply brief, Medtronic argued–for the first time–that a particular figure in one of the prior art references of record disclosed two of the claim requirements of the ’334 patent. The Board agreed with Medtronic and canceled all but one of the challenged claims.

On appeal, NuVasive objected to not receiving adequate notice of NuVasive’s assertion that the figure (FIG. 18 of U.S. Patent No. 5,860,973 to Michelson) rendered the challenged claims obvious. In addition, NuVasive requested and was denied the opportunity to submit a surreply to address this new argument by the Board.

Not only did the Board deny NuVasive’s request to file a surreply, it prevented NuVasive from presenting any arguments about FIG. 18 of Michelson during the oral argument.

PATENT OWNER:  And in the reply, they specifically point to the alleged narrower disclosure in Michelson, and then they show it in the vertebral space here. The key of figure 18 and figure 19 is that it is showing a modular implant that is designed to be inserted in modular fashion, again, to create a wide implant.

PETITIONER: Your Honor, I again object, that is raising a new argument that’s not in his response.

PATENT OWNER: And this was an argument that we brought to the Board’s attention, Your Honor, that they raised in reply, and we’re just addressing the argument because I will not have an opportunity to address this argument when Mr. Schwartz stands up in reply and points this Board to figures 18 and 19.

JUDGE: But you asked for a surreply and we denied that.


JUDGE: So I think you just need to stick with — you can point out what they argue, but you should not be responding to it at this hearing.

Because NuVasive was not given the opportunity to present evidence or arguments regarding the applicability of FIG. 18 of Michelson to the obviousness inquiry, the Federal Circuit found a procedural violation of the APA and remanded the case for further proceedings.

For NuVasive, however, the victory may be more procedural than substantive. Only two dependent claims were remanded for further proceedings because most of the challenged claims were also found invalid in view of FIG. 18 of Michelson in another IPR proceeding, which the Federal Circuit affirmed in the same opinion. In the other proceeding, Medtronic raised the FIG. 18 argument in the original petition and thus there was no procedural violation.


Posted on 11/18/2016 by Deakin T. Lauer

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

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 a two-step analysis for determining whether a PTAB IPR institution decision is reviewable:

First, the Federal Circuit must determine whether the challenge is “closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review” – thus foreclosing review – or if it instead “implicate[s] constitutional questions,” “depend[s] on other less closely related statutes,” or “present[s] other questions of interpretation that reach, in terms of scope and impact,” “well beyond ‘this section,’” in which case its “authority to review the decision to institute appears unfettered.”

Second, even in decisions grounded in a closely related statute, the Federal Circuit must determine if the challenge is “directed to the Board’s ultimate invalidation authority with respect to a specific patent,” in which case the decision is also reviewable.

In the underlying IPR proceeding, Husky had argued that the doctrine of assignee estoppel barred institution of an IPR brought by petitioner Athena, a company formed by a co-inventor and assignor of the challenged patent (also a former owner and president of Husky itself). In instituting the IPR, the Board found that in light of the broad language of 35 USC § 311 – providing that “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent” – assignors are not estopped from petitioning for IPR review. In its final written decision, the Board went on to reject most, but not all, challenged claims. Husky appealed to the Federal Circuit, and Athena across-appealed.

On appeal, under the first step of its analysis, the panel majority held that the Board’s institution decision rested on its interpretation of 35 USC § 311, and that § 311 is “closely related” to any decision to initiate inter partes review, foreclosing Federal Circuit review. Under the second step of its analysis, the majority held that, as in the previous Achates decision, the question of assignor estoppel is not “directed to the Board’s ultimate invalidation authority.” Rather, it is limited to “who may petition for review,” a question that “falls outside of the narrow exceptions to the otherwise broad ban on our review of the decision whether to institute.” Thus, the panel found that it lacked jurisdiction to review the Board’s institution decision, resulting in dismissal of Husky’s appeal.

Judge Plager dissented from the dismissal, warning against limiting the reviewability of a Board decision “simply because the Board may attribute its decision to an interpretation of a ‘related’ statute.” He questioned the majority’s characterization of the Board’s decision as interpreting a “related statute,” pointing out first that assignor estoppel is a common law doctrine. He further argued that “[t]he decision to institute inter partes review is governed primarily by the specifics of § 314(a)–(c),” so even if the Board’s decision was based on an interpretation of 35 USC § 111, “[i]It would not be beyond reason to consider § 311 … a ‘less closely related statute.’” He further argued that in view of the questions related to assignor estoppel and its interplay with 35 USC § 111, the institution decision “present[ed] other questions of interpretation that reach, in terms of scope and impact, well beyond ‘this section.’” Finally, he cited  Judge Reyna’s concurring opinion in the recent WiFi v Broadcom case, stating that in applying Cuozzo, “there is a range of reviewable issues that this court is obligated to consider. Examples may include, among others, filing deadlines and joinder and estoppel issues.”

Because Athena prevailed in its cross appeal on substantive validity issues, the case was remanded to the Board for further proceeding. So, any challenge to the majority’s decision vis-à-vis assignor estoppel – or to its broader “two-step” approach to determining jurisdiction over challenges to IPR institution decisions –­ will have to wait.


Posted on 09/30/2016 by Derrick W. Toddy

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

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 Wi-Fi’s assertion that the denial of requests for discovery on the time-bar issue falls within that narrow exception.

In the IPR proceeding, Patent Owner Wi-Fi argued that petitioner Broadcom was time-barred because of an alleged privy relationship with litigants subject to the Section 315(b) time bar. The Board rejected Wi-Fi’s argument, and rejected its request for discovery on the privity issue.

Last fall, in Achates, the Federal Circuit held that Section 314(d) prohibits review of “the Board’s determination to initiate IPR proceedings based on its assessment of the time-bar of § 315(b)” even if those issues are restated in the final written decision. On appeal, Wi-Fi argued that Achates had been “implicitly overruled” by Cuozzo and that the Board’s denial of discovery on the privity issue was just the type of “shenanigan” contemplated by Cuozzo. In rejecting this argument, the Federal Circuit panel noted that its logical conclusion “would render routine procedural orders reviewable, contrary to the entire thrust of the Cuozzo decision.”

After rejecting Wi-Fi’s time bar argument, the Federal Circuit affirmed the Board’s finding that all challenged claims are unpatentable as anticipated.

Judge Reyna filed a concurring opinion, describing why he believes a final decision concerning the time bar set forth by 35 U.S.C. § 315(b) should be subject to review, and that the contrary rule set forth in Achates should be reconsidered by an en banc Federal Circuit. Judge Reyna reasoned that “[c]ompliance with the time bar is part of the statutory basis on which the final decision rests, despite the fact that the question is first evaluated at the outset of the proceeding,” and that Cuozzo “compels us to review allegations that the Board has ignored, or erred in the application of, the statutory time bar.” Wi-Fi now has 30 days to request an en banc rehearing.


Posted on 09/20/2016 by Andrew M. Mason

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

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, Inc. IPR2012-00027 (PTAB June 11, 2013), which places the burden on patent owners to demonstrate that a proposed claim is patentably distinct over the prior art of record and other prior art known to the patent owner. The Federal Circuit has upheld this practice and the original panel in the now-vacated decision of In re Aqua Products Inc., 823 F.3d 1369 (Fed. Cir. 2016) affirmed the PTAB decision noting that they were bound by this precedent.

In its order granting the petition for rehearing en banc, the Federal Circuit requested supplemental briefing on the following questions:

      (a) When the patent owner moves to amend its claims under 35 U.S.C. § 316(d), may the PTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them? Which burdens are permitted under 35 U.S.C. § 316(e)?

      (b) When the petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim? If so, where would the burden of persuasion, or a burden of production, lie?

Oral argument in this case is scheduled for December 9, 2016.


Posted on 8/17/2016 by Deakin T. Lauer and Todd M. Siegel

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 proceeding, Tech Center #, and can limit your search results to documents filed by the Board, Petitioner, or Patent Owner
  • An improved dashboard that includes the most recent document upload activity and status of filed cases
  • Easier navigation of AIA review papers and exhibits

PTAB E2E can be found at https://ptab.uspto.gov/#/login


Posted on 07/12/2016 by Deakin T. Lauer

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:  The Court confirmed that the PTAB’s decision whether or not to institute an IPR is not subject to judicial review.  This was expected, as the statute states:  “determination by the [Patent Office] whether to institute an inter partes review under this section shall be final and nonappealable.” The Court did, however, provide a few limited exceptions: (a) if the petition is so empty of substance that the entire proceeding results in a due process violation (which seems highly unlikely to occur in actual practice), or (b) if the PTAB engages in “shenanigans” by acting outside its statutory authorization (such as by instituting an IPR on a section 112 ground).  In the end, this is how the Board and the Federal Circuit have been operating for years, and there will be no change.

IPR Claim Construction Standard is BRI:  While the fight over the right claim construction standard focused on dueling policy issues between the parties and the amici, in the end, the Court appears to have found the decision to be a fairly straightforward application of administrative procedure law.  The statute provided the PTO with discretion to create regulations “establishing and governing inter partes re­view,” and the PTO exercised that discretion by promulgating a regulation setting the claim construction standard in IPR as BRI.  Case closed.  While the parties argued that an IPR is either more like an application procedure or more like a court case, the Court found that it had ample elements of an agency (not court) proceeding.  For example, any party can file an IPR even if it has no constitutional standing because not accused and the PTAB can continue the proceeding even if the petitioner settles.  In the end, the decision came down to reasonableness in exercising rulemaking authority.  The BRI standard was reasonable.  (Based on the Court’s discussion, it appears likely that if the PTO had established an IPR claim construction that was more like the Phillips standard, the Court would have found that standard to be reasonable as well.)

Rejection of Cuozzo’s Arguments:   The Court rejected Cuozzo’s two primary arguments about unreasonableness.  (1) Cuozzo argued that BRI was unfair because in practical application, the PTAB hardly ever allows amendment.  The Court stated that the PTAB’s manner of exercising its discretion on amendments in IPRs was not before it, and in any event, Cuozzo’s proposed amendment actually would have, according to the PTAB, broadened the claim.  (2) The Court also rejected Cuozzo’s argument that the twin claim construction standards created inconsistency in the courts and the PTO.  The Court responded that this inconsistency in standards has long existed, with the BRI standard being used in other PTO proceedings.  Again, with the focus on whether the PTO acted reasonably in its rulemaking, the Court found it reasonable for the PTO to ensure that all or most of its proceedings use the same BRI standard even if that continued the split between courts and the agency.

Cuozzo Decision


Posted on 06/20/2016 by Deakin T. Lauer

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 a motion to amend.

In opposing the motion, petitioner Shinn Fu argued that Tire Hanger failed to address all known art because its motion did not discuss certain prior art references of record.  The PTAB rejected Shinn Fu’s argument, noting that “[a] patent owner meets its duty of candor and good faith by grouping prior art references together according to their particular teachings without having to make a presentation on each and every reference giving rise to that same teaching.” Decision at 20.

The PTAB found that, although the motion to amend did not specifically address a known reference, it did “argue patentability over substantially similar prior art.”  Thus, when several known prior art references “closely resemble[]” one another, are “substantially similar,” and contain “duplicative” teachings, a Patent Owner need “discuss[] only a representative few.”

The decision also confirmed that an amending patent owner is “not required to prove that the claims are patentable over every piece of prior art known to a skilled artisan,” but at least must “explain why the claims are patentable over the prior art of record,” as set forth in Microsoft v. Proxyconn.

This PTAB decision follows the Federal Circuit’s recent decision in Nike v. Adidas, which clarified that a patent owner need only address material prior art when moving to amend.

Tire Hanger


Posted on 04/24/2016 by Andrew M. Mason