In Coalition for Affordable Drugs VIII, LLC, v. The Trustees of the University of Pennsylvania, No. IPR2015-01835, Paper No. 56 (P.T.A.B. March 6, 2017), the PTAB concluded that despite evidence that the combinations of prior art references may have disclosed the claimed invention, an ordinary artisan would not have had a reasonable expectation of
PTAB Decisions
PTAB: No Chance to Re-characterize Disclosures of Reference in IPRs
By Spencer J. Johnson on
Posted in PTAB Decisions
Final Written Decisions were entered on March 7, 2017 in 6 IPRs brought by Qualcomm Inc. against ParkerVision, Inc (IPR2015-01828, -01829, -01831, -01832, -01833, and -01834). These 6 IPRs all challenged patent 6,091,940 (the ’940 patent), a patent directed to methods and systems where a signal with a lower frequency is up-converted to a higher…
PTAB: Sovereign Immunity Applies to IPR’s
Posted in PTAB Decisions
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…
The PTAB Speaks Out on Analogous Art
By Nancy J. Linck & Michael V. Battaglia on
Posted in PTAB Decisions
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’s Discretion to Deny Institution under 35 U.S.C. § 325(d)
By Caitlin M. Wilmot & Nancy J. Linck on
Posted in PTAB Decisions
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
By Derek F. Dahlgren & Nancy J. Linck on
Posted in PTAB Decisions
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”
By Nancy J. Linck & Martin M. Zoltick on
Posted in PTAB Decisions
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
By Nancy J. Linck & Martin M. Zoltick on
Posted in PTAB Decisions
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?
By Nancy J. Linck & Derek F. Dahlgren on
Posted in PTAB Decisions
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
Posted in PTAB Decisions
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…