PTAB Rules Dealer Show Catalog Fails to Qualify as Prior Art

Authored by Brian S. Mudge and co-authored by Dragan Plavsic

In a recent decision, the Patent Trial and Appeal Board held that a reference used to support each of the grounds for invalidity did not qualify as prior art. The case, GoPro v. Contour IP,[1] involved the Board’s analysis of whether a reference, the GoPro Catalog, was publicly accessible to persons of ordinary skill in the art. Because the Petitioner failed to establish that reference was publicly accessible to ordinary artisans, the PTAB rejected the instituted prior art challenges without reaching the merits of the obviousness grounds. The Board also denied the parties’ respective admissibility challenges to evidence relating to the GoPro Catalog.

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Federal Circuit Declines Review of PTAB Assignor Estoppel Ruling

Authored by Brian S. Mudge

In a recent precedential opinion, the Federal Circuit dismissed a patent owner’s appeal of a ruling by the PTAB that assignor estoppel does not prevent a former patent owner from challenging a patent via inter partes review. The case, Husky Injection Molding Systems Ltd. v. Athena Automation Ltd.,[1] saw the court of appeals effectively defer to the Board on the question of assignor estoppel because, in its view, the issue does not fall within the “narrow” exceptions to the “broad” bar against review of institution decisions.

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CAFC Rejects Strict Requirement for Motions to Amend

Authored by Brian S. Mudge

In a recent precedential opinion, the Federal Circuit vacated a ruling by the PTAB that had rejected a motion to amend on procedural grounds. The case, Veritas Techs. LLC v. Veeam Software Corp.,[i] saw the court of appeals disagree with the Board on the level of discussion required of a patent owner seeking to amend, and represents a relaxation of one of the requirements imposed by the PTAB for motions to amend claims in an AIA trial. In addition, this case (along with the pending en banc review in the Aqua Products case) signals that the Federal Circuit may be taking a harder look at the procedures for amending patents in AIA trials.

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Tension in the PTAB: How to Determine Whether a Patent Claims a Covered Business Method?

Authored by Brian S. Mudge and Andrew D. Kasnevich
Congress enacted the transitional program for post-grant review of covered business method (“CBM”) patents by the Patent Trial and Appeal Board as a quick and cost-effective way to adjudicate the validity of business method patents. In determining whether to institute a patent trial, the PTAB normally decides, as a threshold matter, whether the challenged patent qualifies as a covered business method, i.e., whether the patent claims a method, or corresponding apparatus, that is used in the practice, administration, or management of a financial product or service. In the early stages of the program’s existence, the PTAB found a range of business methods and software patents eligible for CBM review.1

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CGH WINS RARE GRANT OF MOTION TO AMEND

Authored by Brian S. Mudge

In the brief history of AIA trials, the Board has granted only a handful of motions to amend — six at the time of the Supreme Court oral argument in Cuozzo. A recent decision by the Board has upped that number by one. The case, Google v. ContentGuard Holdings1, involved a motion to amend which also requested the Board’s opinion that the amended claim was substantially identical to the originally issued claim.

Key Takeaway: A patent owner who successfully amends a claim in an AIA trial can gain further advantage by also requesting a determination that the new claim is substantially identical to the original claim. With a new claim declared not only patentable but also of the same scope as the original claim, a patent owner can defeat arguments regarding intervening rights as to the amended claim.

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