Klarquist News & Insights

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In the nonprecedential opinion of Cutsforth, Inc. v. MotivePower, Inc., the Federal Circuit vacated a PTAB decision finding all claims of Cutsforth’s patent obvious over the prior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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PTAB

Definite I win, indefinite you lose

In a trio of cases over the past year, the Board has denied institution or terminated IPR proceedings because it found that the challenged claims were indefinite and, therefore, could not be construed. Although that result means no IPR finding of unpatentability, it does leave in its wake a very probative–but not binding–finding of indefiniteness […]

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PTAB

No second guessing the PTAB: Federal Circuit reverses E.D. Tex. denial of stay pending CBM review in automatic appeal under AIA § 18(b)(2).

In an automatic interlocutory appeal from the district court’s denial of defendants’ motion to stay pending CBM review, the Federal Circuit found that the district court committed legal error by reviewing the PTAB’s decision to institute. The district court had given little weight to Section 18(b)(2)’s “simplification of issues” and “burden of litigation” factors, largely […]

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