The Supreme Court held in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), that the Patent Trial and Appeal Board’s (“PTAB” or “the Board”) practice of so-called partial institutions was contrary to the statute. The Supreme Court explained that once an inter partes review (“IPR”) is instituted, the PTAB must decide on
Non-Patent Literature at the PTAB
By Mark T. Rawls on
Posted in Appellate Decisions
Typically, the Patent Trial and Appeals Board (PTAB) is thought to disfavor non-patent literature—that is, “printed publications” under 35 U.S.C. § 102(b) that are not patents, patent publications, or patent applications.
To the extent that this is true, it most likely stems from the fact that members of the PTAB are, by training, used to…
The Future of IPRs – The US Supreme Court’s Decisions in Oil States and SAS
By Martin M. Zoltick & Michael H. Jones on
Posted in Appellate Decisions
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…
How Creative is One of Ordinary Skill – DSS Tech. Mgmt. v. Apple Inc.
By John D. Higgins on
Posted in Appellate Decisions
In an attempt to challenge the patentability of an issued claim, petitioners every so often come across a prior art reference that discloses all the recited features of the claim at-hand except for one limitation. Rather than bringing in another reference to teach that one limitation, petitioners sometimes merely refer to the knowledge and creativity…
Do Nidec Motor Corp. and Wi-Fi One Foreshadow an End to Self-Joinder in Inter Partes Review Proceedings?
By D. Lawson Allen on
Posted in About the PTAB
Section 315(c) of the America Invents Act (“AIA”) provides that if the Director of the U.S. Patent and Trademark Office (“USPTO”)
institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the…
When Does a Reference Disclose a Recited Range with Sufficient Specificity to Constitute an Anticipation of the Claim?
By John D. Higgins on
Posted in PTAB Decisions
In Titanium Metals Corp. v. Banner[1], the Federal Circuit notably held that it is “an elementary principle of patent law” that when a claim recites a numerical range, the claimed range is anticipated by a prior art reference that discloses a point or an example within that range. Accordingly, when seeking to anticipate…
PTAB Finds that Tribal Sovereign Immunity Does Not Apply to Review Proceedings
By Mark T. Rawls & D. Lawson Allen on
Posted in PTAB Decisions
The Patent Trial and Appeal Board (“the PTAB”) ruled last Friday, February 23, 2018, that tribal sovereign immunity does not apply to the Saint Regis Mohawk Tribe. The issue has been percolating for months. For more background on the issue, see these previous blog articles – Tribal Sovereign Immunity: The New Defense Against IPRs? and…
Federal Circuit Revives Polaris’ Claims After PTAB’s Obviousness Analysis Veers Off Course
By Aydin H. Harston on
Posted in Appellate Decisions
On February 9, 2018, in vacating and remanding parts of an obviousness decision, the Federal Circuit found that the Patent Trial and Appeal Board (“PTAB” or “the Board”) erred in parts of its analysis of motivation, teaching away, and commercial success in cancelling all claims of Polaris’ U.S. Pat. No. 8,596,405 (“the ’405 patent”) in…
The Preclusive Effect of Related PTAB Decisions
By Brett A. Postal on
Posted in Appellate Decisions
In MaxLinear, Inc. v. CF Crespe LLC, the Federal Circuit recently confirmed that issue preclusion applies to administrative agency decisions, including those from the Patent Trial and Appeal Board (“PTAB”) in IPR proceedings. In MaxLinear, Inc., the Federal Circuit was presented with the appeal of a PTAB decision upholding the patentability of the…
Federal Circuit Holds That PTAB May Issue Adverse Judgments Prior to an Institution Decision
By Nicole M. DeAbrantes on
Posted in Appellate Decisions
On January 24, 2018, the Federal Circuit affirmed a decision of the Patent Trial and Appeal Board (“PTAB”), finding that 37 C.F.R. § 42.73(b) allows the PTAB to enter an adverse judgment prior to an institution decision when the patent owner disclaims all of the challenged claims. In Arthrex, Inc. v. Smith & Nephew, Inc.…