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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Patent Trial Program Emerges Intact From Supreme Court Row

Authored Brian S. Mudge

In its first decision addressing the post-grant patent trial program recently established by Congress, the Supreme Court in Cuozzo1 has given a resounding victory to the U.S. Patent & Trademark Office. Rejecting a challenge to the PTO’s handling of these new proceedings, the ruling confirms that the Office has broad powers to determine how the cases will be tried and the standards used to govern them. As a result, patent owners will continue to face a difficult path before the PTO in defending challenges to patent validity — one that, to date, has proven to be significantly more hazardous than the courts to patentees.

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Board Issues Mixed Rulings on Patent Eligibility After Enfish

Authored by Brian Mudge and Christopher Gresalfi

In two CBM decisions following the Federal Circuit’s recent Enfish1 opinion, the PTAB has considered patent eligibility of inventions directed to computer databases. The result: one ruling in favor of patent eligibility and one against. These decisions highlight the importance, when adjudicating section 101 challenges, of determining what problem the patent at issue is attempting to solve – and the patent specification may be critical to answering this question.

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Federal Circuit: Estoppel Does Not Apply to Non-Instituted Grounds

Authored by Brian S. Mudge and Ksenia Takhistova

In a recent precedential opinion in Shaw Indus. Group, Inc. v. Automated Creel Sys., Inc.1, the Federal Circuit decided that IPR estoppel provisions in § 315(e) will not apply to any invalidity ground that the petitioner raised in the petition but the PTAB chose to not institute for redundancy. Another precedential opinion issued less than two weeks later in HP Inc. v. MPHJ Tech. Investments, LLC2 confirmed this result.


Both cases involve an appeal from PTAB final decisions in IPR proceedings. In the first case, Shaw was once a defendant in a patent-infringement case brought by Automated Creel over its US Patent No. 7,806,360 directed to “creels” for supplying yarn and other stranded materials to a manufacturing process. Shaw filed two petitions for inter partes review of the ’360 patent claims, which were later consolidated and resulted in one final decision. The Board did not institute many grounds proposed by Shaw, denying them as redundant, including a ground from the first petition that some of the ’360 patent claims were anticipated by the Payne reference. In the final written decision, the Board invalidated some, but not all, of the ’360 patent claims based on the instituted grounds. Shaw appealed from the Board’s decision, and also petitioned for a writ of mandamus, requesting the Federal Circuit to instruct the PTO to institute IPR based on the Payne reference.

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PTAB Grants Rare Claim Amendment in an IPR

Authored by Brian S. Mudge and Dragan Plavsic 

In a recent IPR decision, the PTAB granted a patent owner’s motion to amend, a relatively rare occurrence in AIA trials to date. The case, Shinn Fu Co. of America, Inc. v. The Tire Hanger Co., No. IPR2015-00208, addressed the extent to which a patent owner must analyze prior art in meeting its requirements to establish patentability of proposed new claims. Providing further guidance as to the Federal Circuit’s recent Nike1 opinion, the PTAB ruled that there is no requirement that a patent owner analyze expressly every individual reference cited during prosecution of the challenged patent — particularly where there are many different permutations of the cited prior art. Essentially, the PTAB’s decision means that so long as the patent owner groups prior art references according to claim features they teach, and examines a representative one out of each group for each feature, the patent owner would meet its duty of candor and satisfy its burden for the motion to amend.

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