Klarquist News & Insights

PTAB

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

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 […]

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PTAB / Federal Circuit / PTAB Procedures and Rules

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 […]

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PTAB / Federal Circuit / Privity / PTAB Procedures and Rules / Statutory Bars

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 […]

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PTAB / Claim Amendments / Federal Circuit / Post Grant Reviews

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

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, […]

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PTAB / Federal Circuit / Obviousness

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

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 […]

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PTAB / Claim Amendments / Federal Circuit / PTAB Procedures and Rules

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, […]

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PTAB / Federal Circuit / Obviousness

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 […]

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PTAB / Obviousness

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 […]

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PTAB / Federal Circuit / Obviousness

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 […]

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PTAB / Post Grant Reviews

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 […]

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