Federal Circuit Rules Petitioners Bear Burden of Proof to Establish Unpatentability of Claim Amendments in Inter Partes Reviews

Authored by Brian S. Mudge and Andrew D. Kasnevich

In a long-awaited decision, the Federal Circuit, sitting en banc, has ruled that petitioners in AIA patent trials bear the burden of proving that proposed amended claims are unpatentable. The decision, Aqua Products v. Matal,[1] upends the PTAB’s practice, developed in prior Board opinions (and approved in Federal Circuit panel opinions), requiring patent owners to prove that amended claims are patentable.

Key Takeaway:  The Federal Circuit’s en banc ruling means that, at least in the near term, and possibly the long term as well, petitioners will have the burden of proving amended claims are unpatentable. While patent owners will continue to have an initial burden of production in drafting and supporting a motion to amend, the Board may not place the ultimate burden of persuasion on a patent owner to establish patentability of amended claims. Rather, once a patent owner has provided sufficient information, as provided by PTO rules, to justify a motion to amend, the burden of persuasion will lie with the petitioner to prove that amended claims are not patentable. This change is likely to have a substantial impact on the rate of successful motions to amend, which will impact AIA trials and district court proceedings.

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PTAB Section 101 Ruling Breaks With CAFC Opinion on Business Method

Authored by Brian S. Mudge

In a recent decision, a divided PTAB panel has ruled that a patent by Trading Technologies is directed to an ineligible abstract idea. While a post-Alice patent ineligible ruling is not itself unusual, the case, IBG v. Trading Technologies,[1] is noteworthy because it involves a member of the same patent family, and indeed nearly identical claim language, as a Trading Technologies patent that the Federal Circuit previously held was not directed to an abstract idea.

Key Takeaway:  Despite nearly identical claim language, the IBG majority panel reached a conclusion as to patent eligibility opposite to that of the Federal Circuit in a prior case involving the same patent family — thus demonstrating how unpredictable the issue can be and raising more questions about making abstract idea determinations.

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Is it Settled (Part 2)? PTAB Following Federal Circuit’s Narrowed CBM Definition

Authored by Brian S. Mudge and Andrew D. Kasnevich

Covered business method reviews are an important component of AIA patent trials, but the extent of patents eligible for CBM review has not been subject to a consistent standard. In Part 1, we discussed the Federal Circuit’s decisions narrowing the scope of CBM eligibility, eliminating from CBM review patents claiming activities that are only “incidental to” or “complementary to” financial activity, and its most recent order denying en banc rehearing in Secure Axcess — which may have settled the legal question of CBM scope. In Part 2 (herein), we discuss recent PTAB decisions showing how the Board has adjusted its approach in evaluating whether a patent is eligible for CBM review in view of the Federal Circuit’s guidance, along with considerations for parties and practitioners going forward.

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Is it Settled (Part 1)? Divided Federal Circuit Denies En Banc Review of Narrowed Definition of Covered Business Method

Authored by Brian S. Mudge and Andrew D. Kasnevich

We have previously written about the scope of patents eligible for CBM review, including the PTAB’s inconsistent approaches in determining whether patents qualify for CBM review and the Federal circuit’s narrowing of the eligibility standard employed by the PTAB.[1] On June 6, 2017, a divided Federal Circuit issued an order in Secure Axcess denying petitions for rehearing en banc.[2] By declining en banc rehearing, the Federal Circuit may have placed a stamp of finality on the scope of CBM review.

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SCOTUS to Decide 2: Are AIA Patent Reviews Constitutional?

Authored by Brian S. Mudge and Clifford A. Ulrich

For the second time in less than a month, the U.S. Supreme Court on June 12, 2017 granted certiorari in a case involving inter partes review. In Oil States v. Greene’s Energy Group, the Court has agreed to decide whether administrative patent trials, launched in 2012 by the America Invents Act, are Constitutional.[1] The case will decide if the AIA patent review program, which has resulted in over 1,500 final decisions declaring some or all challenged claims unpatentable, remains viable, or whether validity challenges must be heard by the district courts. A ruling that AIA patent trials are unconstitutional would result in substantial change to the current patent litigation landscape and strategy.

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