An upcoming Precedential Opinion Panel (“POP”) at the Patent Trial and Appeal Board (“PTAB” or “the Board”) may offer improved clarity for petitioners and patent owners when a petitioner relies on non-patent literature in challenging a patent.
Background
Hulu, LLC sought inter partes review (“IPR”) of U.S. Patent No. 5,806,062 (“the ’062 patent”) asserting claims…
On March 8, 2019, in Personal Web Technologies, LLC v. Apple, Inc., No. 2018-1599 (Fed. Cir. Mar. 8, 2019) the Federal Circuit reversed the Patent Trial and Appeals Board’s (the “Board” or “the PTAB”) cancellation of U.S. Patent No. 7,802,310 (“the ’310 patent”) based on inherent obviousness in an inter partes review (“IPR”). Another…
Last week, the first Precedential Opinion Panel (“POP”) entered a decision examining the scope of joinder available under 35 U.S.C. § 315(c). Proppant Express Investments, LLC v. Oren Techs., LLC, Case IPR2018-00914, Paper 38 (Mar. 13, 2019). The POP made two determinations about the statutory authority of the Patent Trial and Appeal Board (“the…
On March 5, 2019, the USPTO hosted a rare and special event in recognition and celebration of female inventors and the contributions of women in science, technology, engineering, and mathematics (“STEM”). The celebration commenced with opening remarks from Laura A. Peter, Deputy Director of the USPTO, followed by keynote speeches from Congresswoman Martha Roby, Secretary…
The United States government is currently in a partial shutdown due to a lapse in appropriated funding for a portion of the federal government. The partial shutdown began on December 22, 2018, and is currently in its fifth week. Two government organizations affected by the shutdown are (i) the Department of Commerce, which includes the…
The Patent Trial and Appeal Board (“the PTAB” or “the Board”) is preparing for its first instance of the newly created Precedential Opinion Panel (POP). Proppant Express Invs., LLC v. Oren Techs., LLC, IPR2018-00914, Paper 24 (PTAB Dec. 3, 2018). Interested parties may have had a busy holiday season, because initial briefing was due…
The United States Patent and Trademark Office (“USPTO” or the “Office”) recently proposed new AIA trial procedures aimed at boosting the success rate of patent owner motions to amend.[1] The new procedures, if made effective, would allow patent owners to preview the Board’s analysis of a motion to amend and to then revise their…
The PTAB will soon implement a change in its claim construction standard in post-issuance reviews, moving from the broadest reasonable interpretation (“BRI”) standard to the standard articulated in the Federal Circuit’s opinion, Phillips v. AWH Corp.[1] We previously covered this on our blog here. The effects of the change may be significant in…
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…
The PTAB has broad discretion under 35 U.S.C. § 325(d) to deny institution if “the same or substantially the same prior art or arguments previously were presented to the Office.” Several are aware that the PTAB commonly exercises its discretion to deny “follow-on” petitions that seek to challenge the validity of a patent that has…
