On Final Written Decision in Pure Fishing, Inc. v. Globeride, Inc., the PTAB determined the Petitioner had failed to establish by a preponderance of the evidence that claims 1 and 2 of U.S. Patent 5,921,489 were unpatentable. The PTAB’s decision turned on the question of whether two cited references were “analogous to the claimed
PTAB Decisions
PTAB’s Discretion to Deny Institution under 35 U.S.C. § 325(d)
Under 35 U.S.C. § 325(d), the Patent Trial and Appeal Board (“Board”) may “take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”[1] From seven Informative Decisions, in which the Board used its discretion under § 325(d)…
Claim Survives IPR Challenge Due to Indefiniteness
Activision Blizzard, Inc. v. Acceleration Bay, Inc. presents an interesting situation emphasizing the limited scope of IPR proceedings and the interplay between PTAB practice and co-pending litigation. In Activision Blizzard., the Petitioners challenged claims of U.S. Patent 6,920,497, a patent directed to “a method of connecting a seeking computer through a portal computer to…
Petition Barred Under § 315(e)(1) Due to Art that Could Have Been “Readily Identified”
Praxair filed a first petition for inter partes review of claims 1-19 of U.S. Patent 8,846,112. The PTAB instituted review based on the first petition and concluded that all claims, except claim 9, were unpatentable. In doing so, the PTAB determined that the “providing information” step in claim 1, and “similarly-worded claims steps in other…
The Fate of Cases Remanded to the PTAB
Cases remanded to the PTAB by the Federal Circuit are beginning to resurface.[1] The PTAB decided two such cases this month. See Dell, Inc. v. Acceleron, LLC, Nos. 2015-1513, -1514 (Fed. Cir. March 15, 2016), on remand, IPR2013-00440, Paper 49 (PTAB Aug. 22, 2016) and Ariosa Diagnostics v. Verinata Health, Inc.,…
PTAB Real Party-in-Interest Issues — Guidance From the Supreme Court?
The PTAB has been reluctant to find that an unnamed party is a real party-in-interest in an AIA review or in privity with the named party. Usually a patent owner attempting to establish that a real party-in-interest has not been named has had to establish that the unnamed party exerted control or could have exerted…
EMPHASIZING “REASONABLE” IN THE “BROADEST REASONABLE INTERPRETATION” STANDARD FOR CLAIM CONSTRUCTION
Daicel Corporation v. Celanese Int’l Corp., No. IPR2015-00171, Paper No. 86 (P.T.A.B. June 23, 2016) sheds important insight on how the Board applies the broadest reasonable interpretation (BRI) standard for claim construction, and the application of intrinsic and extrinsic evidence. In that case, the Board instituted an IPR based on both § 102(b) and…
The Federal Circuit Orders the PTAB to Construe Expired Patents Under Phillips
In a 16-page non precedential opinion, the Federal Circuit held that the PTAB must construe claims of an expired patent using a Phillips-type claim construction, even if the subject patent had not expired at the time the AIA trial was instituted. Black & Decker v. Positec USA, Inc., Nos. 2015-1646, -1647, slip op. at …
The Myth of the Broadest Reasonable Interpretation
On January 15, 2016, the Supreme Court granted certiorari in Cuozzo Speed v.Lee, in part, to decide whether the PTAB should be applying the broadest reasonable interpretation when construing claims in AIA review proceedings rather than the claim construction applied in district court litigation. One of the questions the Court will address is: “Whether…