On March 24, 2022, the Court of Appeals for the Federal Circuit issued a precedential opinion in Hunting Titan, Inc. v. Dynaenergetics Europe GMBH, affirming — on a procedural technicality — a precedential decision of a Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board (PTAB) that granted a motion to amend claims … Continue Reading
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Restoring Balance: Increased Discretionary Authority of the PTAB Favors Patentees
The Patent Trial and Appeal Board (PTAB) is an administrative law body of the US Patent and Trademark Office (USTPO) that determines disputes over the issuance, reissuance, and cancellation of patent claims. The PTAB has become well known to patent litigants since the implementation in 2012 of new proceedings, including Inter Partes Review (IPR), for … Continue Reading
PTAB Time-Bar Determinations Under 35 U.S.C. §315(b) Are Final and Not Appealable
Yesterday, in Thryv, Inc., f/k/a Dex Media, Inc. v. Click-To-Call Technologies, LP, et al., the U.S. Supreme Court ruled 7-2 that the non-appealability of Patent Trial and Appeal Board (PTAB) institution decisions encompasses PTAB decisions on whether a statutory time bar applies. More specifically, 35 U.S.C. §314(d), which sets forth the finality and nonappealability of … Continue Reading
PTAB Trial Practice Guide Update Codifies Recent PTAB Decisions and Procedure (First of a Series)
Introduction In July 2019, the Patent Trial and Appeal Board (PTAB) issued an Update to the PTAB Trial Practice Guide.[i] The July 2019 Update documents practices and procedures that the PTAB has found useful, and in some instances, summarizes or repeats practices and procedures from precedential PTAB opinions. The US Patent and Trademark Office’s announcement … Continue Reading
The USPTO Proposes to Interpret Claims in Post-Grant Proceedings in the Same Way as the Federal Courts, and to Consider Prior Claim Constructions by Courts
With IPRs here to stay, the USPTO is proposing to drop its BRI standard and interpret claims under the same standards as used by federal courts. Specifically, the USPTO has proposed to change the standard for interpreting claims in inter partes review, post grant review, and covered business method patent proceedings conducted by the PTAB … Continue Reading
Are Inter Partes Reviews “Quintessential” Agency Adjudications?
A superlative or excessive statement is often a dead give-away that the statement may not be true. In deciding whether the America Invents Act’s inter partes review provisions violate Article III of the Constitution of the United States, the Federal Circuit in MCM Portfolio LLC v. Hewlett-Packard Company, 815 F.3d 1284, 1291 (Fed. Cir. 2015) … Continue Reading
Why Some State-Funded Institutions May Not Be Subject to Inter Partes Review
On January 25, 2017, the Patent Trial and Appeal Board issued an order dismissing three separate Inter Partes Review (IPR) petitions based on the doctrine of sovereign immunity. The doctrine of sovereign immunity emanates from the Eleventh Amendment, and acts to immunize states from civil suit. In Covidien LP v. University of Florida Research Foundation … Continue Reading
Is the Broadest Reasonable Interpretation of Claim Terms, as Applied in Inter Partes Review, Converging on the Standard Applied in Litigation?
This past summer, the Supreme Court settled the debate about the standard to be applied by the Patent Trial and Appeal Board (PTAB) in construing patent claims – finding its use of the broadest reasonable interpretation (BRI), the approach used by the US patent office for the past century, was proper.1 Its decision left in … Continue Reading
The Standard Remains the Same: Supreme Court Confirms PTAB Claims Construction Rules
The United States Supreme Court today unanimously decided to permit the Patent Trial and Appeal Board (“PTAB”) to continue using a tougher standard for claims construction than the standard applied in litigation. In Cuozzo Speed Technologies LLC v. Lee, the Court ruled that the PTAB’s application of the so-called “broadest reasonable interpretation” standard was consistent … Continue Reading
Federal Circuit supports the Patent Office in first Inter Partes Review appeal decision
In a split 2-1 decision, the U.S. Court of Appeals for the Federal Circuit yesterday upheld Patent Office rules making it easier for companies to kill bad patents. This decision was the first issuing from an appeal of an inter partes review (IPR) decision. Created two and a half years ago, IPRs have become an … Continue Reading
