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Federal Circuit

PTAB / Claim Amendments / Claim Construction / Federal Circuit

PTAB’s alternative claim construction saves the day

Alternative claim constructions are often presented in IPR proceedings. Addressing alternative constructions in the final written decision may help the PTAB avoid reversals on appeal. That was the case in Arendi v. Google, where the Federal Circuit rejected the PTAB’s primary claim construction but affirmed based on an alternative claim construction discussed in the decision. In […]

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PTAB / Estoppel / Federal Circuit / PTAB Procedures and Rules

Federal Circuit affirms Board’s grant of adverse judgment based on pre-institution disclaimer

Today, the Federal Circuit affirmed a Board decision of adverse judgment against a Patent Owner based on the pre-institution disclaimer of challenged claims. In IPR2016-00917, Arthrex (Patent Owner) filed a preliminary response requesting denial of the petition based on the disclaimer of all challenged claims  and specifically stating that it was not requesting adverse judgment. In […]

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PTAB / Federal Circuit / 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 […]

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PTAB / Federal Circuit / Obviousness / PTAB Procedures and Rules

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 […]

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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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