The Current Roundup

CAFC: Joined parties may appeal IPR decision. The Board instituted the first petitioner’s IPR, and three days later, three more parties each filed their own petitions accompanied by motions for joinder. The Board joined all three petitioners, each of which relied on the joinder exception to the one-year bar. The patent owner prevailed on the …

The Current Roundup

CAFC: Dice game found ineligible for patenting. The examiner rejected the applicant’s claims for a dice game as directed to an abstract idea ineligible for patenting under § 101. The method included placing wagers on whether certain die faces will appear face up, rolling the dice, and paying a payout amount if at least one wagered …

2019 PTAB Bar Association Annual Conference Registration

2019 PTAB Bar Association Annual Conference Agenda Announced, Registration Open The 2019 PTAB Bar Association Annual Conference will take place March 14 – 15, 2019, at the Ritz-Carlton in Washington, D.C. Pre-conference sessions will be offered March 13. The conference will bring together practitioners, in-house counsel, and members of the bench for a dynamic discussion of Patent Trial Appeal Board (PTAB) best practices, …

PTAB Roundup

CAFC: Issue preclusion arising from a Rule 36 summary affirmance. In an earlier appeal involving the same patent owner and related patents, the Federal Circuit summarily affirmed several PTAB IPR decisions under Rule 36. That summary affirmance collaterally estopped the patent owner from revisiting in this appeal whether the Board correctly found that a particular …

PTAB Roundup

CAFC: Printed publication case revised.The Federal Circuit reissued its July 27 opinion (reported in the August 10, 2018 Roundup) that vacated the Board’s conclusion that a catalog was not a prior art printed publication. In coming to the same result, the Court explained that the catalog does not need to be made directly available to a …

PTAB Roundup

CAFC: Non-prior art evidence filed with reply supported the motivation to combine. The Federal Circuit affirmed the Board’s unpatentability decision. On appeal, the patent owner argued that it did not have notice and an opportunity to respond in the IPR to evidence submitted with the petitioner’s reply. The Court disagreed, explaining that the petitioner properly used reply …

PTAB Roundup

CAFC: Involuntarily dismissed complaint triggers one-year bar.  In Click-To-Call Technologies v. Ingenio, 899 F.3d 1321 (Fed. Cir. 2018), the Federal Circuit held that voluntary dismissal without prejudice does not render service of an infringement complaint a nullity for the purposes of 35 U.S.C. § 315(b)—the defendant’s one-year period for filing an IPR continues to run. …

PTAB Roundup

CAFC: Competitor has standing to appeal its IPR, obtains reversal. The Federal Circuit held that the petitioner/appellant has standing to appeal its IPR even though it was not accused of infringement and did not concede that it infringes. The Court was persuaded by the appellant’s declarations (submitted in reply to a standing challenge in appellee’s responsive …

PTAB Roundup

CAFC: Petitioner bears burden to show that it is not barred. The Federal Circuit clarified that the petitioner bears the burden of persuasion to demonstrate that its petition is not time-barred under 35 U.S.C. § 315(b). The petitioner’s initial identification of the real party in interest does not create a “rebuttable presumption,” but as a practical matter, …

PTAB Roundup

CAFC en banc in part: No more “nullity” exception for one-year bar. Confining its opinion to a footnote, the en banc Court held that a voluntary dismissal without prejudice does not create an exception to the one-year bar of 35 U.S.C. § 315(b). The Board previously held—in a decision it designated precedential—that the petitioner in …