Patent Challenges

Analysis of USPTO post-issuance proceedings

In Continental Circuits LLC v. Intel Corporation, No. 2018-1076 (Fed. Cir. Feb. 8, 2019), a Federal Circuit panel confirmed that disavowal of claim scope, whether in the patent’s specification or prosecution history, must be “clear and unmistakable.” The patents at issue in Continental Circuits were directed to “a multilayer electrical device . . . having a tooth structure” and “methods for making the same,” where the “teeth improve[d] the adhesion of the layers to one another.”  Continental Circuits,…
In a move that may make it harder to invalidate—but also potentially easier to limit the scope of—challenged patents, the US Patent and Trademark Office (USPTO) on May 8 proposed narrowing the interpretation of patent claims during AIA validity trials. In the Notice of Proposed Rulemaking, the USPTO proposes replacing the broadest reasonable interpretation (BRI) standard for unexpired and proposed claims with the Phillips standard that is applied by district courts and the International…
The Patent Trial and Appeal Board today hosted a “Chat with the Chief” webinar to elaborate on the practical effects of its April 26 memo implementing the Supreme Court’s decision in SAS Institute Inc. v. Iancu. Of particular note is that the Board seemingly intends to consider revoking some partial institution decisions to retroactively de-institute pending trials. Many listener questions sought to clarify the impact on prior institution decisions in pending trials. Several addressed…
The Supreme Court’s recent decision in SAS Institute Inc. v. Iancu will rapidly impact pending and future AIA trials. According to a guidance memo released by the Patent Trial and Appeal Board on April 26, 2018, future institution decisions “will institute as to all claims or none” and, when granting institution, “will institute on all challenges raised in the petition.” The wording suggests that “all challenges” refers to all grounds on which claims are challenged,…
The United States Supreme Court in SAS Institute struck down the Patent Trial and Appeal Board’s practice of instituting inter partes review (IPR) on only a subset of claims challenged in the petition. SAS Institute Inc. v Iancu, 584 U.S. ___, No. 16-969 (2018). Thus, the Board’s final written decisions in IPRs must address the patentability of all challenged claims. The Board’s claim-by-claim “partial institution” practice was based on the United States Patent and Trademark Office (USPTO) rule stating that the…
In its long-awaited Oil States decision, the United States Supreme Court today held that the Constitution does not preclude the United States Patent and Trademark Office (USPTO) from reviewing the validity of issued US patents. Oil States Energy Servs., Inc. v Greenes Energy Group, LLC, 584 U.S. ___, No. 16-712 (2018). In a 7-2 decision authored by Justice Thomas, the Court rejected the argument that patents are private rights subject to revocation only by…
In the past several months, the PTAB has designated as “informative” five decisions in which the Board exercised its discretion to deny institution under 35 U.S.C. § 325(d).  That statute provides that the board may reject a petition if “the same or substantially the same prior art or arguments previously were presented to the Office.”  The informative decisions, while not binding on subsequent panels, are meant to provide guidance for parties appearing before the Board.…
In In re NuVasive, Inc., the Federal Circuit clarified what constitutes adequate notice to a Patent Owner of “pertinent portions” of a prior art reference relied upon in an IPR petition. Case No. 2015-1672 (Fed. Cir. Nov. 9, 2016). On appeal to the Federal Circuit after the Board cancelled all but one of the challenged claims under 35 U.S.C. § 103, the Patent Owner argued that it did not receive adequate notice or opportunity…
In Perfect Surgical v. Olympus America, Inc., the Federal Circuit found harmful error in the PTAB’s diligence framework and conclusions, thereby potentially lowering the bar required to establish diligence in PTAB cases. Case No. 2015-2043 (Fed. Cir. Nov. 15, 2016). In the underlying IPR, the Board found a patent owner did not prove the inventor continuously exercised reasonable diligence throughout the critical period of time needed to antedate a prior art reference, due to three…
In Intellectual Ventures II LLC v. Ericsson Inc.,[1] the Federal Circuit considered whether the PTAB’s adoption of a new claim construction in its Final Written Decision constitutes a violation of the parties’ due process. Intellectual Ventures argued that it was denied due process because the construction set forth in the Board’s Final Written Decision was not one that any of the parties offered and was never “previewed” to the parties until oral argument.…