Knobbe/Martens: Intellectual Property Law


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"Pop Change" No Longer Means Buying Soda in Ohio: Keeping up with the Precedential Opinion Panel in 2019

May 17, 2019 Bridget A. Smith

For many practitioners, it seems that change is the only certainty at the Patent Trial and Appeal Board.  And only five months into the year, change in 2019 has become more certain than ever.

Late last year, the PTAB revamped its standard operating procedures in a document known as Revised SOP2.  With these revisions, the PTAB created the “Precedential Opinion Panel” or “POP.”  The POP is tasked, in part, with rehearing matters of “exceptional importance” in pending trials and appeals.  By default, the POP members consist of the Director, the Commissioner for Patents, and the Chief Judge of the PTAB.


Broad description in specification defeats patent owner’s bid for narrow construction

May 15, 2019 Suyoung Jang and Jeremy Anapol


Before Wallach, Moore, and Chen.  Consolidated appeals from the Patent Trial and Appeal Board and the U.S. District Court for the District of New Jersey.

Summary: The PTAB correctly construed the claim term “treatment,” based on the challenged patent’s specification, to include both anti-cancer effects and reduction in side effects.

Federal Circuit Appeal Dismissed Where Party Appealing PTAB Decision Lacked Article III Standing


Before Newman, O’Malley, and Taranto. Appeal from the Patent and Trial Appeal Board.

Summary: Appellants from an IPR decision to the Federal Circuit must have concrete claims of current or non-speculative interest in practicing the claims under the patent at issue in order to have standing to appeal.


Finding No Unambiguous Definition in Record, Federal Circuit Applies Plain Meaning to Disputed PTAB Construction


Before Moore, Reyna, and Chen.  Appeal from the Patent Trial and Appeal Board.

Summary:  A clear and unambiguous definition of a claim term is required to redefine the term to mean something other than its plain and ordinary meaning.


PTAB Designates as Precedential Decision Exercising 314(A) Discretion to Deny Institution of Follow-On Petition Filed by a Different Party

May 10, 2019 Ben J. Everton and Mark E. Davis

Summary: The General Plastic factors used to determine whether the PTAB will exercise its discretion to deny a follow-on IPR petition can weigh against institution even if the follow-on petition is filed by a different party.

The PTAB recently designated another decision as precedential: Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, -00063, -00084, Paper 11 (PTAB Apr. 2, 2019). Valve Corp. filed a petition for IPR challenging the ’934 patent and patent owner, Electronic Scripting Products (ESR), argued the PTAB should exercise its discretion under 35 U.S.C. § 314(a) to deny the follow-on petition. Before Valve filed its petition, ESR sued both Valve and HTC in the district court for infringement of the ’934 patent. Valve was voluntarily dismissed from the case, while HTC remained and filed an IPR petition challenging the ’934 patent. The PTAB denied institution of the HTC petition. After this denial, Valve filed the petition at issue in this decision.


PTO Explains that Old School Proceedings (Reissue/Reexam) Must Generally Yield to New School Proceedings (AIA Trials) for Claim Amendments

May 9, 2019 Benjamin Anger

Recently, the PTO issued a Notice providing guidance on how the Board treats reissue and reexamination proceedings while an AIA trial on the same patent is co-pending.  The guidance comes in response to public comments and questions seeking to understand the interplay, particularly with respect to claim amendments, between the PTO’s long-established reissue and reexamination proceedings, and the PTO’s relatively new AIA trials (inter partes review, post-grant review, and cover business methods).  Questions concerning a patent owner’s potential use of reissue or reexamination as an alternative route to amending claims in an AIA trial are not surprising given the PTO’s low rate of granting Motions to Amend in AIA trials, on the order of just10% through the end of fiscal year 2018.  Even though the Notice is “only meant to summarize existing practice,” several important lessons can be drawn from it. 


Federal Circuit Affirms Patent-Ineligibility of Claims Directed to Displaying Financial Information on a Known Device


Before Moore, Clevenger, and Wallach.  Appeal from the Patent Trial and Appeal Board.

Summary: Claims directed to providing additional trading information on a prior art display, without more, are patent-ineligible under 35 U.S.C. § 101.


Secondary Consideration of Skepticism Supports Non-Obviousness at PTAB

April 29, 2019 Alexander D. Zeng and Kendall Loebbaka

Before Moore, Wallach, and Hughes.  Appeal from the Patent Trial and Appeal Board

Summary:  Industry skepticism is a question of fact that weighs in favor of non-obviousness and can range on a scale, with the most weight afforded to skepticism that the subject matter is technically infeasible, unworkable, or impossible.


Common Forum Selection Clause in License Agreement Prevents Patent Validity Challenge at PTAB

April 22, 2019 Bridget A. Smith and John Sganga

On April 18, 2019, the Federal Circuit issued a non-precedential opinion that is making stakeholders in the patent licensing community sit up and take note.  The case was Dodocase VR, Inc. v. MerchSource, LLC, holding that a boilerplate forum selection clause in a licensing agreement can prevent a validity challenge at the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB), even though the clause makes no mention of PTAB proceedings.



Before Moore, Mayer, and Linn.  Appeal from the Patent and Trial Appeal Board.

Summary: A graphical user interface that allows users to place orders for items (such as shares of stock) by moving icons onto displayed item prices is not patent eligible subject matter.


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