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In the nonprecedential opinion of Cutsforth, Inc. v. MotivePower, Inc., the Federal Circuit vacated a PTAB decision finding all claims of Cutsforth’s patent obvious over the prior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

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KLARQUIST NEWS

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In the nonprecedential opinion of Cutsforth, Inc. v. MotivePower, Inc., the Federal Circuit vacated a PTAB decision finding all claims of Cutsforth’s patent obvious over the prior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 (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. Most likely, the Board will supplement its findings of obviousness in its Final Written Decision without changing its original co […]

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Supreme Court accepts first IPR appeal–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 court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision wheth […]

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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. Against 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 decision, as alleged by the patentee. [Note that in August 2015 the USPTO asked for public comments on the possib […]

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What does “is” mean? Federal Circuit disagrees with Board construction and reverses IPR decision cancelling claims.

On November 25, 2015, the Federal Circuit reversed and remanded the decision in Sipnet EU S.R.O v. Straight Path IP Group, IPR2013-00246 (PTAB Oct. 9, 2014). This case marks the first time the Federal Circuit has overturned a IPR decision cancelling challenged claims. The panel, by a 2-1 majority, found that the Board misconstrued the term “is connected” in the phrase “a query as to whether the second process is connected to computer network.” The petitioner argued that the BRI encompa […]

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315(b) applies when a complaint has been filed 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 filed less than a year ago, an earlier-filed 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 products. Because some claims were resolved with the dismissal of the first complaint, the Board found that the rationale of Orac […]

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Second bites permitted:  PTO estoppel does not apply to claims on which trial was not instituted.

On May 14, 2015, the Board issued a precedential opinion in Westlake Services, LLC v. Credit Acceptance (CBM2014-00176). In that opinion, the Board denied patent owner’s motion to terminate because a petition challenging the same claims was filed (but not instituted on) previously. In denying patent owner’s motion, the Board confirmed that estoppel before the PTO applies on a claim-by-claim basis and does not apply to claims not instituted on nor addressed in a Final Written Decision.  The […]

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Arris Group Inc. v. C-Cation Technologies LLC, Paper 10, No. IPR2015-00635 (1 May 2015) – Informative

Pursuant to authorization from the panel, C-Cation Technologies, LLC (“Patent Owner”) filed a Motion for Discovery from Petitioner. Paper 7 (“Mot.”). In its motion, Patent Owner seeks production of indemnification agreements between ARRIS Group, Inc. (“Petitioner”) and Comcast Corporation relating to a lawsuit filed in January 2011 by Patent Owner against Comcast, titled C-Cation Technologies, LLC v. Comcast Corp., Case No. 2:11-cv-00030 (E.D. Tex.). Id. at 4 (citing Ex. 2001). According to […]

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AOL Inc v. Coho Licensing, Paper 12, No. IPR2014-00771 (24 March 2015) – Informative

AOL Inc. and Cloudera, Inc. (“Petitioner”) filed a request for rehearing titled “Petitioner’s Request for Rehearing by an Expanded Panel Pursuant to 37 C.F.R. §§ 42.71(C)-(D).” Paper 11 (“Req. for Reh’g”). In that request, Petitioner asserts that a dissent from the denial of institution strongly favors rehearing, and an expanded panel. Req. for Reh’g 2. Petitioner also argues the panel misapprehended that Spawn’s1 entire premise is to “provide a solution” for al […]

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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 by the highest administrative law body at the USPTO. In each case the indefiniteness issue arose from the interpretation of means […]

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