In American National v. Sleep Number Corporation, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed the Patent Trial and Appeal Board’s (“Board”) decision to allow a patent owner to present proposed amended claims during inter partes review (“IPR”)proceedings that both respond to a ground of unpatentability and make other wording changes unrelated
PTAB
Federal Circuit Draws the Line of Disclaimers’ Binding Power
In the Federal Circuit’s recent decision of CUPP Computing AS v. Trend Micro Inc., the Court made the precedential holding that the Patent Trial and Appeal Board (“the Board”) is not bound by a party’s disclaimer in the very IPR proceeding in which it is made, just as a disclaimer in a district court…
The USPTO Wants More Attorneys Practicing Before the PTAB
On October 18, 2022, the United States Patent and Trademark Office (USPTO) posted two notices on Regulations.gov seeking public input on the requirements to practice before the USPTO and Patent Trial and Appeal Board (PTAB). The goal is to expand admission criteria so “more Americans, including those from traditionally under-represented and under-resourced communities, can participate…
PTAB Sanctions Non-Practicing Entity for Seeking to Abuse the IPR Process in Order to Extort Money
Last month, in OpenSky Industries v. VLSI Technology LLC, IPR2021-01064 (Oct. 4, 2022), the Director of the Patent Trial and Appeal Board (PTAB) issued a precedential decision regarding abuse of process.
The decision from the Director held that Petitioner OpenSky had abused the IPR process by (1) filing an IPR in an attempt to extract…
USPTO Extends Motion to Amend Pilot Program
On October 4, 2022, the United States Patent and Trademark Office (USPTO) announced that it would be extending the Motion to Amend (MTA) Pilot Program at the Patent Trial and Appeal Board (PTAB) for a second time—now set to run through September 16, 2024.[1]
The MTA Pilot Program was initiated on March 15, 2019,…
The Expansion of IPR Estoppel – Potential Win for Patent Owners
Since its inception, the PTAB has gained a negative reputation among patent owners, even being referred to as “patent death squads.”[1] However, in the past year the Federal Circuit has provided a glimmer of hope for patent owners through the expansion of inter partes review (IPR) estoppel. Because of Cal. Inst. of Tech. v.
IPR Limbo During the Arthrex Decisions
In Polaris Innovations Ltd. v. Brent, No. 2019-1483, 2022 WL 4241665 (Fed. Cir. Sept. 15, 2022), the Federal Circuit faced an appeal that had bounced back and forth between the Court and Patent Trial and Appeal Board (“the Board”) several times while it was caught in the administrative ambiguity resulting from the Arthrex decision.…
New Interim Process at the PTAB for Decision Circulation and Internal Review
Recently, the Patent Trial and Appeal Board (PTAB) announced a new interim procedure for decision circulation and internal review. This interim procedure is aimed at promoting feedback, eliminating inconsistencies, and increasing transparency during the decision pre-issuance process. The push for increased transparency comes as a result of last year’s Supreme Court decision in United States …
Raising a New Rationale or Elaborating on a Previously Raised Issue?
In Everstar Merch. Co. v. Willis Elec. Co., No. 2021-1882, 2022 WL 1089909 (Fed. Cir. Apr. 12, 2022), the Federal Circuit provided guidance to distinguish between raising a new argument and elaborating on previously raised arguments in proceedings before the Patent Trial and Appeal Board (“Board”). Here it was decided that a minor point…
In Hunting Titan v. DynaEnergetics, Federal Circuit Affirms Precedential Opinion Panel But Avoids Ruling on a Standard for Sua Sponte Rejection of Substitute Claims
Background
In 2018, Hunting Titan, Inc. filed a petition for inter partes review (“IPR”) of U.S. Patent No. 9,581,422 (“the ’422 patent”), which is owned by DynaEnergetics Europe GmbH, a manufacturer of industrial explosives. In pertinent part, Hunting Titan asserted in its petition that claims 1-15 of the ’422 patent were unpatentable because they were…