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
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
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 Reminded of Its Obligations Under the Administrative Procedures Act
Dickinson v. Zurko, 527 U.S. 150 (1999) requires the Federal Circuit to review the USPTO’s fact-findings under an Administrative Procedures Act (“APA”) standard rather than for clear error, the standard it previously applied to such fact-findings. Id. at 154-65. The Federal Circuit later determined that the correct APA standard was the “substantial evidence”
Limits on Use of “Common Sense” – Arendi S.A.R.L. v. Apple Inc., et al.,
The Federal Circuit’s precedential opinion in Arendi S.A.R.L. v. Apple Inc., et al., Case No. 2015-2016 (Aug. 10, 2016) is instructive on the limits of “common sense” in an obviousness analysis. The opinion is also an example of what appears to be a growing trend of the Federal Circuit reminding the Board that it must
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
Is The Federal Circuit Taking a “Hands Off” Approach to Reviewing the PTAB Trial Decisions?
The Federal Circuit has been charged with oversight of the USPTO, including oversight of PTAB trials. However, given the large number of AIA review petitions that have been filed[1] and that are being instituted,[2] there is some question as to the court’s ability to provide that oversight, even if only a fraction of
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