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
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
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
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