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
Patent
Not All GUIs Are Created Equal Under USPTO Guidelines and Alice
By Jennifer B. Maisel on
Posted in About the PTAB
The United States Patent and Trademark Office (USPTO) published new and updated guidelines on subject matter eligibility on February 5, 2018, including a quick reference sheet on decisions holding patent claims eligible and identifying abstract ideas, an index of examples, and a chart of subject matter eligibility court decisions.
One update to note in 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.…
The Strict Limits of 3 U.S.C. § 121’s Safe Harbor Provision (And the Intersection of Two Blogs)q
By Daniel R. McCallum on
Posted in Appellate Decisions
Patent litigation often involves the intersection of practice before the PTAB and district courts. Not surprisingly then, the subject of this post—the Federal Circuit’s recent opinion concerning the reexamination of U.S. Patent No. 6,284,471 (“the ʼ471 patent”)—directly relates to a litigation analyzed on our firm’s companion blog, BiosimilarsIP.com. See here and here.
In re…
Waves of IPRs Against Alacritech-Owned Patents in 2017 May Test PTAB’s Limits Regarding Joinder Practice
By Spencer J. Johnson on
Posted in About the PTAB
Seven new IPRs were filed against patents held by Alacritech Inc. on December 27, 2017. These IPRs (four of which were filed by Dell and three by Cavium) join eight others filed by Intel, Dell, or jointly by Wistron, Wiwynn, and SMS InfoComm since November. Earlier in the year, 24 IPRs were filed against Alacritech-held…
Wi-Fi One, LLC v. Broadcom Corp – Federal Circuit Holds that PTAB Time-Bar Rulings Are Appealable
By Douglas Choi on
Posted in Appellate Decisions
In Wi-Fi One, the Federal Circuit held en banc that time-bar determinations by the PTAB under § 315(b) are appealable and remanded the associated IPRs for further proceedings pertaining to the time-bar issue.
Appeals from IPR decisions of the PTAB are limited in scope by § 314(d), which states that “the determination by the…
Recent Decision Casts Doubt on the Fate of Tribal Sovereign Immunity at the PTAB
By D. Lawson Allen on
Posted in PTAB Decisions
The topic of sovereign immunity was raised a number of times in inter partes review (IPR) proceedings in 2017, and it was cast into the national spotlight when Allergan transferred several patents for its dry-eye drug Restasis® to the St. Regis Mohawk Tribe in an attempt to shield them from PTAB review. But a recent…
PTAB Grants a Rare Rehearing in Cook Medical, LLC v. Boston Scientific Scimed, Inc
By John D. Higgins on
Posted in PTAB Decisions
As set forth in the statute and upheld by the Supreme Court in Cuozzo,[1] the Patent Trial and Appeal Board’s (“PTAB” or “Board”) institution decisions are “final and nonappealable.”[2] Accordingly, a petitioner who fails to get a review instituted by the Board has limited options to maintain its validity challenge. One recourse…
Supreme Court Oral Argument in Oil States
By Jennifer P. Nock & Nicole M. DeAbrantes on
Posted in About the PTAB
The Supreme Court recently held oral argument in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC. Before what appears to be a divided Court, the parties addressed pointed questioning over whether the inter partes review (“IPR”) process is constitutional. The justices’ questions and comments touched on a wide-range of issues including patentee…
PTAB Issues Guidance on Motions to Amend in View of Aqua Products
By Caitlin M. Wilmot on
Posted in About the PTAB
On November 21, 2017, the PTAB issued guidance on motions to amend in view of the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).[i] The decision, a compilation of five separate opinions totaling 148 pages, left much to be analyzed and digested. However, as…