On October 11, 2018, the United States Patent and Trademark Office (USPTO) announced a change in the claim construction standard used for inter partes review (IPR), post-grant review (PGR) and covered business method (CBM) review. For these proceedings, the claim construction standard will be changed from the broadest reasonable interpretation (BRI) standard to the standard
Martin M. Zoltick
The Future of IPRs – The US Supreme Court’s Decisions in Oil States and SAS
Yesterday, the U.S. Supreme Court issued two important decisions relating to inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (PTO).
Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, U.S., No. 16-712, 4/24/2018
In Oil States, the Supreme Court ruled…
PTAB: Sovereign Immunity Applies to IPR’s
In Covidien LP v. University of Florida Research Foundation, Inc., No. IPR2016-01274, Paper No. 21 (P.T.A.B. January 25, 2017), the PTAB held that sovereign immunity prevents would-be petitioners from using IPR’s to challenge the patentability of patents owned by states. Noting that the 11th Amendment confers to the states a broad grant of…
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.,…
Overburdened: Federal Circuit Reverses Based On PTAB’s Improper Shifting Of Burden To Patent Owner
On July 25, 2016, in In re Magnum Oil Tools Int’l, Ltd., Case No. 2015-1300, the Federal Circuit clarified the respective burdens carried by both the petitioner and the patentee in an inter partes review proceeding. The court reversed the Board’s decision that the challenged claims of U.S. Patent No. 8,079,413, directed to oil…
Click-To-Call–Still Ringing (For Now)–But Will We Get An Answer On Judicial Review Of PTAB Institution Decisions
On Monday, June 27, the Supreme Court granted Click-to-Call’s petition for writ of certiorari, vacated the Federal Circuit’s judgment below, and remanded the case “for further consideration in light of Cuozzo Speed Technologies, LLC v. Lee, 579 U. S. ___ (2016).” Click-to-Call Technologies, LP v. Oracle, Corp., No. 15-1014. This so-called “GVR” order…
New Rules for Post-Grant Proceedings
The United States Patent and Trademark Office (USPTO) recently enacted new rules for post grant proceedings before the Patent Trial and Appeal Board (PTAB). (Federal Register, vol. 81, No. 63, at pp. 18750-18766, April 1, 2016). The new rules were formulated from public comments to proposals published in August 2015 and a series of PTAB…