AIA Blogs

  • Federal Circuit Rules That Not All Petitioners Have Standing to Appeal Adverse IPR Results
    Monday, January 23, 2017

    The Federal Circuit recently dismissed an appeal from an inter partes review proceeding where the appellant/petitioner failed to establish that it had constitutional standing to maintain an appeal. Phigenix, Inc. v. Immunogen, Inc., No. 2016-1544, 2017 WL 74762 (Fed. Cir. Jan. 9, 2017). The appeals court ruled that a IPR petitioner must demonstrate constitutional standing [...]

  • Full Federal Circuit To Consider Appealability of PTAB Decision On Timeliness of IPR Petition
    Monday, January 9, 2017

    The Federal Circuit has ordered en banc review to consider whether the timeliness of a petition for inter partes review (IPR) can be appealed following the Patent Trial and Appeal Board’s decision to institute review. Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1944 (Fed. Cir. Jan. 4, 2016)(granting petition for rehearing en banc). One unresolved [...]

  • PTAB Obviousness Decision Must Provide “Reasoned Explanation” For Motivation To Combine References
    Tuesday, December 13, 2016

    In a recent pair of decisions, the Federal Circuit has tightened the procedural and substantive requirements for Board decisions on obviousness.  In Nuvasive, the Federal Circuit vacated a PTAB final decision that challenged claims were unpatentable as obvious when the Board failed to articulate a reasoned explanation for combining two prior art references. In re [...]

  • PTAB Decision To Terminate IPR Proceedings After Institution Is Not Appealable
    Friday, October 21, 2016

    Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., No. 2015-1977 (Fed. Cir. Oct. 20, 2016) Applying the Supreme Court’s interpretation of the AIA’s provision making inter partes review institution decisions “final and nonappealable,” 35 U.S.C. § 314(d), the U.S. Court of Appeals for the Federal Circuit held that a Patent Trial and Appeal Board decision [...]

  • Supreme Court denies Cert in Cases Challenging Constitutionality of AIA Trials
    Thursday, October 13, 2016

    On October 11, 2016, the US Supreme Court denied petitions for certiorari filed in two cases by parties challenging the constitutionality of post grant proceedings instituted under the Leahy-Smith America Invents Act. In the first case, Cooper v. Lee, No. 15-955, the petitioners argued that 35 U.S.C. § 318(b), which permits the USPTO Patent Trial and [...]

  • Federal Circuit Overturns PTAB Denial of Motion to Amend Claims in IPR Proceeding
    Tuesday, September 20, 2016

    Veritas Technologies LLC v. Veeam Software Corp., No. 2015-1894 (Fed. Cir. Aug. 30, 2016). On recurring controversy in AIA trials is the difficulty patent owners face meeting the PTAB’s strict requirements for amending claims. In a recent case, the Federal Circuit vacated a PTAB ruling denying a patent owner’s motion to amend. It noted that [...]

  • Federal Circuit Rules that PTAB Claim Construction in Inter Partes Reexamination Proceeding Is Not Binding on District Court in Later Litigation
    Thursday, August 11, 2016

    Skyhawke Technologies, LLC v. Deca International Corp., Case No. 2016-1325 (Fed. Cir. July 15, 2016) One recurring question arising from AIA trials and other post-grant proceedings before the PTAB is whether a claim construction ruling made during the administrative proceeding is binding on a district court in a subsequent infringement lawsuit or other litigation. In B&B [...]

  • PTAB Institution Rate Continues To Lag Behind 2014 Rate, Highlighting Need For Expert Reports to Adequately Support Petition
    Monday, August 1, 2016

    Data released by the USPTO Patent Trial and Appeal Board (PTAB) for the Fiscal Year 2016 reveals that the PTAB is granting petitions to review at a rate similar to FY 2015, and significantly below the higher rate in FY 2014. Thus far in FY 2016, the Board has denied instituting trial on about 33% [...]

  • PTAB Invalidates Two Livestock Patents in First PGR Decisions
    Thursday, June 30, 2016

    On June 13, 2016, the Patent Trial and Appeal Board (PTAB or Board) issued two post-grant review (PGR) decisions invalidating two livestock valuation patents for being directed to patent ineligible subject matter under 35 U.S.C. § 101, based on the Supreme Court’s opinion in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). These are [...]

  • PTAB Decision Vacated and Remanded for Changing Claim Construction “Midstream”
    Monday, June 13, 2016

    Even though the Federal Circuit agreed with the Patent Trial and Appeal Board’s new claim construction in the final written decision, the Court found that the Board errored by adopting a new construction for a term it had construed differently in its institution decision. (see SAS Institute, Inc. v. ComplementSoft, LLC (Fed. Cir. June 10, [...]