Federal Circuit Approves PTAB Trial Approach

Authored by Brian S. Mudge

In a split decision, the Federal Circuit has approved the PTAB’s practice of deciding to institute AIA trials on a claim-by-claim basis. The case, Synopsys, Inc. v. Mentor Graphics Corp., No. 2014-1516 (Feb. 10, 2016), involved an appeal of a PTAB final decision that did not address all claims that were initially challenged in the IPR petition. Rejecting the petitioner’s argument that the PTAB’s final decision must address each claim challenged in an IPR petition, the Federal Circuit held that the PTAB had discretion to institute inter partes review on less than all claims initially presented in the petition. The Federal Circuit also ruled that the PTAB’s determination on the issue of a potential time bar could not be appealed, and that the PTAB properly handled the patent owner’s motion to amend.

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PTAB Issues Second Ruling on Scope of Estoppel After Final Decision

Authored by Brian S. Mudge

In its second ruling on the scope of estoppel,1 the Board has rejected a patent owner’s attempt to terminate an AIA trial based on a final written decision involving the same patent. The case, Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176 (PTAB May 14, 2015) (paper 28), involved a covered business method (CBM) proceeding brought in connection with U.S. patent no. 6,950,807. Although the ’807 patent was the subject of a final decision in a prior CBM case, the PTAB ruled that estoppel did not bar the second CBM proceeding because the specific claims of the ’807 patent at issue were not addressed in the prior final decision.

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Federal Circuit Affirms PTAB in First Appeal After Final AIA Decision

Authored by Brian S. Mudge, T. Cy Walker, Robert L. Hails, Jr. and Adeel Haroon

In its first ruling on an appeal of a final IPR decision, the Federal Circuit has affirmed the Board’s decision in all respects. The case, In re Cuozzo Speed Techs., LLC, No. 2014-1301 (Fed. Cir. Feb. 4, 2015), involved two key issues on appeal which have been hotly debated since the PTAB began hearing IPRs and other post-grant proceedings under the AIA, and which sparked a lengthy dissent. A divided Federal circuit panel ruled (a) that the court lacked jurisdiction to review the PTAB’s decision to institute the IPR even in connection with the appeal of a final decision; and (b) that the broadest reasonable interpretation (“BRI”) standard applies to construction of claims in an IPR proceeding. In addition, the court upheld the PTAB’s decision that the tried claims were obvious and that Cuozzo’s motion to amend improperly attempted to broaden the claims.

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Managing an Inter Partes Review Tidal Wave: The PTAB’s Administrative Approach to the Zond IPRs

Authored by Michelle Carniaux and Michael E. Sander

What does a patent owner do when they are facing 125 petitions for inter partes review in a single year? How does the Board properly handle proceedings with nearly a dozen petitioners, with overlapping arguments and prior art?

When we last wrote about the top patent owners at the PTAB, we noted that Zond, Inc. was the patent owner with the most number of IPR petitions filed against their patents. At the time, they had an astonishing 62 petitions for inter partes review filed against them. However, in the five months since the article, the total number of petitions filed against Zond’s patents has more than doubled, now at an incredible 125 petitions for inter partes review.

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Invalidating a Patent Under 35 U.S.C. § 112 in an Inter Partes Review

Authored by Michelle Carniaux and Michael E. Sander

When Congress enacted the America Invents Act authorizing the new inter partes review (“IPR”) proceedings, they made clear that an IPR petitioner could challenge a patent only under 35 U.S.C. § 102 and § 103, and only on the basis of patents and printed publications.  See 35 U.S.C. § 311(b).  Congress did not authorize IPR petitioners to challenge a patent for lack of written description or indefiniteness under § 112.  However, this does not mean that the Board is prohibited from invalidating patent claims under § 112 in an IPR.  Specifically, the statute mandating that the Board issue a final written decision does not appear to place limits on the Board’s ability to consider invalidity under other grounds.  Rather, the statute states that:

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