The recent decision in Wi-Fi One v. Broadcom, has presented an interesting opportunity for the Federal Circuit to reconsider its jurisprudence on the reviewability of the PTO’s institution decision post-Cuozzo and in particular the application of the time bar set forth in 35 U.S.C. § 315(b). The language of 35 U.S.C. § 315(b)
Derek F. Dahlgren
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…
PTO’s Dilemma – Are PTAB “Trials” Litigation-Like or Examination-Like?
The question of whether PTAB trials are litigation-like or examination-like (or some hybrid of the two) has been implicated on several occasions. The most recent one is in the In re Aqua en banc hearing Order. No. 2015-1177 (Fed. Cir. Aug. 12, 2012). While the PTAB has repeatedly stated it does not examine proposed amended…
Will Proposed Amended Claims Fare Better After The En Banc Hearing in In re Aqua?
On August 12, 2016, the Federal Circuit agreed to rehear en banc In re Aqua Products, Inc., No. 2015-1177 (Fed. Cir. May 25, 2016) and to stay a petition for rehearing en banc in Prolitec, Inc., v. Scentair Techs, Inc., 807 F.3d 1353 (Fed. Cir. 2015). In both these cases, the Board denied…
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 Supreme Court’s Cuozzo Decision Leaves Many Questions Unanswered
On June 20, 2016, the Supreme Court issued its opinion in Cuozzo Speed Technologies v. Lee. On its face, it is a broad win for the Patent Office. The Supreme Court affirmed the use of the “broadest reasonable interpretation” standard for claim construction in Patent Office review proceedings and the limited reviewability of the…
The Surging Tide of AIA Review Appeals
The America Invents Act (AIA) of 2011 ushered in a new era for the Court of Appeals for the Federal Circuit, introducing 3 new post-grant administrative proceedings that are conducted before the U.S. Patent Trial and Appeal Board (PTAB) and appealable to the Federal Circuit. The proceedings introduced by the AIA include the inter partes…