Knobbe/Martens: Intellectual Property Law

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SIRONA DENTAL SYSTEMS GMBH v. INSTITUT STRAUMANN AG

June 19, 2018 Scott R. Seeley and Andrea Cheek

Before Prost, Moore, and Stoll.  Appeal from the Patent Trial and Appeal Board.

Summary: An IPR petitioner bears the burden of persuasion concerning the patentability of proposed substitute claims. 

USPTO Provides New Guidance on Motions to Amend During IPR

June 15, 2018 Mark E. Davis and Benjamin Anger

On June 1, 2018 the U.S. Patent and Trademark Office designated a Board order in Western Digital Corporation v. SPEX Technologies, Inc. as informative on the issue of Motions to Amend during an IPR.  At the same time, the USPTO de-designated two previously designated orders concerning Motions to Amend.  The Western Digital order provides eight separate areas of guidance for the parties in the event the patent owner elects to file a Motion to Amend.  Some of the information may be familiar to IPR practitioners because of overlap with the de-designated orders, but the Western Digital order importantly incorporates new guidance from recent cases and Board practice.  Thus, IPR litigants should be aware of several important practice changes reflected in the order.

 

MEDTRONIC, INC. v. BARRY

June 11, 2018 James Smith and Karen M. Cassidy

Before Taranto, Plager, and Chen.  Appeal from the Patent Trials and Appeals Board.

Summary: In determining whether materials distributed at meetings or conferences are reasonably accessible to the public, the Board must consider numerous factors, not just the exclusive nature and expertise of a group. 

PGS GEOPHYSICAL AS v. IANCU

June 8, 2018 Vicki Y. Nee and Nicole R. Townes

Before Wallach, Taranto, and Stoll.  Appeal from the Patent Trial and Appeal Board.

Summary: The Federal Circuit determined that it had jurisdiction to hear an appeal from a Board decision in an IPR even though the Board erred in limiting the scope of the IPR by not instituting on all claims and grounds. 

 

IN RE: DURANCE

Before Lourie, Reyna, and Chen.  Appeal from the Patent Trial and Appeal Board (“PTAB”).

Summary: Nothing in § 41.41(b)(2) bars a reply brief from addressing new arguments raised in the examiner’s answer that are not articulated in the Final Office Action, regardless of whether the examiner designated the new argument as a new ground of rejection.

ERICSSON INC. v. INTELLECTUAL VENTURES I LLC.

Before Prost, Newman, and Wallach.  Appeal from the Patent Trial and Appeal Board.

Summary: An unsupported expert opinion does not constitute substantial evidence to contradict a prior art reference.

PRAXAIR DISTRIBUTION, INC. v. MALLINCKRODT HOSPITAL PRODUCTS

May 16, 2018 Albert J. Sueiras and Baraa Kahf

Before Prost, Newman, and Lourie. Appeal from the United States Patent and Trademark Office (PTAB)

Summary: A limitation that merely claims information by incorporating that information into a mental step or process is not entitled to patentable weight under the printed matter doctrine, unless the limitation is functionally related to the substrate.

ANACOR PHARMACEUTICALS, INC. v. IANCU

Before Reyna, Bryson, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: A petitioner in an Inter Partes Review may introduce new evidence not included in its petition if: 1) the evidence is a reply to evidence introduced by the patent owner or 2) the evidence documents the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.

 

ALTAIRE PHARMACEUTICALS, INC. v. PARAGON BIOTECK, INC.

Before Wallach, O’Malley, and Schall.  Appeal from the Patent Trial and Appeal Board.

Summary: PGR petitioner has standing to appeal PTAB decision, where petitioner intended to file an ANDA for the patented product as soon as possible.

USPTO Proposes Phillips-Type Claim Construction For Post Grant Proceedings at the PTAB

The USPTO published a Notice of Proposed Rulemaking on May 9, 2018 seeking to change the claim construction standard for PTAB trials from the current broadest reasonable interpretation (BRI) to the claim construction standard applied in federal courts and ITC proceedings that follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).  The proposed rule also requires the PTAB to consider prior claim construction determinations that are timely made of record from a civil action or ITC proceeding.

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