Klarquist News & Insights

PTAB / PTAB Procedures and Rules

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 […]

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PTAB / PTAB Procedures and Rules / Supreme Court

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:  […]

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PTAB / Supreme Court

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 […]

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PTAB / PTAB Procedures and Rules

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 […]

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PTAB / Federal Circuit

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 […]

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PTAB

The reason a claim is obvious isn’t always obvious–Federal Circuit requires PTAB (and, in turn, petitioner) to spell it out

In the nonprecedential opinion of Cutsforth, Inc. v. MotivePower, Inc., the Federal Circuit vacated a PTAB decision finding all claims of Cutsforth’s patent obvious over the prior art. The panel (C.J. Prost, Clevenger, and Moore) found that the “broad, conclusory statements” in the Board’s Final Written Decision were insufficient to support its finding of obviousness. […]

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PTAB

Supreme Court accepts first IPR review–will the BRI standard survive?

On January 15, 2016, the Supreme Court granted certiorari in Cuozzo Speed Techs. v. Lee. The questions presented are: Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning. Whether the […]

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PTAB

No need for PTAB to switch horses midstream: same panel can pen both institution and final written decisions

In Ethicon Endo-Surgery, Inc. v. Covidien LP, the Federal Circuit confirmed the PTO’s policy of having a single panel conduct post-grant proceedings, from institution through final written decision. Over Judge Newman’s dissent, the majority of Judges Dyk and Taranto held this policy does not violate due process rights to an impartial decision-maker for the final written […]

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PTAB

315(b) applies when a complaint has been served more than one-year earlier—even if some claims were dismissed without prejudice

In the precedential decision of LG Electronics v. Mondis Tech. (IPR2015-00937), the Board held that even though there was a second complaint served less than a year ago, an earlier-served complaint triggered the one-year bar of Section 315(b). The first complaint–filed in 2008–was dismissed without prejudice to certain products and dismissed with prejudice as to other […]

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