We have previously written about how the Federal Circuit and the PTAB are applying the AIA estoppel provisions. 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.
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., 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.
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.
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
Today, the USPTO published proposed amendments to the rules of practice for trials before the Patent Trial and Appeal Board (PTAB). The USPTO, in concert with the American Intellectual Property Association (AIPLA), will discuss the proposed rules during upcoming road show presentations on August 24, 2015 in Santa Clara; August 25, 2015 in Dallas, Texas, and August 26, 2015 in Alexandria, Virginia. A copy of the Federal Register publication is available here.