PTAB Nixes Reliance on Technical Report: Not Publication

Authored by Brian Mudge

We have previously written about disputes regarding whether a prior art reference qualifies as a publication in AIA trials.[1] In a recent decision, the Board ruled that a prior art reference did not qualify as a publication under §102(a). The case, Activision Blizzard v Acceleration Bay,[2] rejected petitioner’s attempt to rely on a 1999 technical report allegedly published by University of California / San Diego (“UCSD”).

Key Takeaway:  This case demonstrates that the PTAB will adhere to demanding requirements for petitioners to establish that a reference qualifies as a prior art publication. Petitioners should be prepared to provide detailed evidence showing a prior art reference was publicly accessible before the priority date of a challenged patent. Meanwhile, patent owners should take advantage of opportunities to challenge the public accessibility of references, particularly where the evidence and arguments in a petition are conclusory; such challenges can be effective in a preliminary response and may derail a case before trial is instituted.

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Federal Circuit Lets CBM-Narrowing Decision Stand

Authored by Brian S. Mudge

The Federal Circuit has denied a request for rehearing en banc of a case, decided last fall, that narrowed the types of patents that may qualify as a Covered Business Method. The case, Unwired Planet v Google,[1] involves the standard to be applied for determining whether a patent is eligible for CBM review.

Key Takeaway.  The Federal Circuit’s November 2016 panel decision in the case – which rejected that portion of the Board’s CBM standard covering matter “incidental” or “complementary” to a financial activity – remains in place. As a result, the PTAB will most likely be applying a narrower definition for “covered business method,” as it has done since the panel decision issued. Parties should be aware of greater scrutiny and narrower scope of patents eligible for CBM review, and that Patent Owners have more opportunity to challenge allegations that a patent meets the statutory definition for CBM patents.

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PTAB, District Courts Diverge on Scope of Estoppel

Authored by Brian S. Mudge

We have previously written about how the Federal Circuit and the PTAB are applying the AIA estoppel provisions.[1] Since the Federal Circuit’s Shaw ruling, several recent opinions have construed the scope of estoppel. Two of these cases, from district courts, cases have applied estoppel narrowly. But a recent PTAB decision, issued in the wake of these decisions, shows that the Board is not following the lead of the district courts, but instead is continuing to apply its broad approach to estoppel. It will likely be left to the Federal Circuit to resolve the difference, although the Court of Appeals recently declined an invitation to take on the issue.

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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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