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PTAB Designates Two New Informative Decisions Addressing IPR Filing Issues
Tuesday, January 16, 2018The PTAB recently designated two decisions as informative that concern the time bar to filing an inter partes review (IPR). Under 35 U.S.C. § 315(b), “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, […]
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PTAB Issues Guidance on Claim Amendments Caused by Aqua Products Decision
Monday, December 4, 2017In a November 21, 2017 memorandum, David P. Ruschke, the PTAB’s Chief Administrative Patent Judge, issued new guidance affecting pending and future motions to amend claims in inter partes review proceedings. The guidance memorandum reflects changes to the PTAB’s procedures in light of the Federal Circuit’s decision in Aqua Products, Inc. v. Matal, 872 F.3d […]
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Supreme Court to Review PTAB Practice of Reviewing Only Selected Challenged Claims
Monday, June 5, 2017SAS Institute Inc. v. Lee, No. 16-969 (U.S. May 22, 2017). On May 22, 2017, the U.S. Supreme Court granted review in the first patent case accepted for the October 2017 term. The Court granted certiorari to review whether the Patent Trial and Appeal Board’s practice of determining the patentability of some, but not all, […]
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Federal Circuit Reverses PTAB, Reaffirms Requirement That Anticipating Reference Disclose Every Element of Claimed Invention
Monday, March 20, 2017Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Case No. 2016-1900 (Fed. Cir. Mar. 14, 2017). The Federal Circuit reversed the Patent Trial and Appeal Board’s final written decision that a challenged claim in a patent relating to systems for controlling torque in electromagnetic motors was unpatentable due to anticipation. The petitioner, Zhongshan Broad Ocean […]
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Patent Claims, Not Embodiments Disclosed in Specification or Litigation Strategy, Determine Eligibility for Covered Business Method Review
Tuesday, March 7, 2017A divided Federal Circuit panel recently vacated a Patent Trial and Appeal Board final decision ruling that challenged patent claims were unpatentable, by holding that the patent was not eligible for review under the transitional program for covered business method (“CBM”) patents. The appeals court held that a CBM patent must “have a claim that […]
