PTAB Roundup

CAFC en banc: Applicants filing § 145 actions do not pay Office attorneys’ fees. In the original Federal Circuit panel ruling, the majority affirmed the district court’s award of expenses that the Office has traditionally sought in § 145 actions (e.g., travel expenses, expert fees, printing expenses), but reversed the district court’s denial of the …

PTAB Roundup

CAFC: No Tribal sovereign immunity from IPR. The Board denied the Saint Regis Mohawk Tribe’s motion to terminate, and the Federal Circuit affirmed, holding that “tribal sovereign immunity cannot be asserted in IPRs.” The Supreme Court held in Fed. Maritime Comm’n v. S.C. State Ports Auth., 535 U.S. 743, 754–56 (2002) that tribal immunity precluded the agency’s adjudications because …

PTAB Roundup

CAFC: Post-SAS remand on motion. All challenged claims survived the IPR after the Board instituted on only one of the two proposed grounds. The petitioner appealed, and then timely moved for remand to the PTAB for consideration of the non-instituted ground in light of SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). The …

PTAB Roundup

CAFC: Motions to amend after SAS and Aqua Products. The Federal Circuit affirmed the Board’s unpatentability decision, as the petitioner’s theory was properly raised in the petition and the Board’s findings were supported by substantial evidence. It vacated the Board’s denial of the patent owner’s motion to amend, however, because the pre-Aqua Products decision improperly placed the burden of persuasion on the …

PTAB Roundup

CAFC: Printed matter doctrine extended to informational and mental steps. The Court upheld the Board’s finding in an IPR that claim limitations for providing information, evaluating, and recommendation were directed to printed matter not functionally related to other claim limitations, and therefore were not entitled to patentable weight under the “printed matter” doctrine. The Federal Circuit …

PTAB Roundup

SCOTUS: Secure Axcess vacated. The Supreme Court vacated as moot the Federal Circuit’s decision addressing the scope of CBM review, Secure Axcess v. PNC Bank National Association, 848 F.3d 1370 (Fed. Cir. 2017), ordering the Federal Circuit “to remand the case to the Patent Trial and Appeal Board to vacate the Board’s order.” The Supreme Court provided no further explanation other than …

PTAB Roundup

SCOTUS and PTAB: Here are links to the SAS Institute and Oil States opinions, and to the PTAB’s Guidance on the Impact of SAS Institute on AIA Trial Proceedings. Also, our PTAB section below has a few post-SAS institution decisions and other orders that issued in time for this issue of the PTAB Roundup. CAFC: …

PTAB Roundup

SCOTUS and PTAB: As we are sure you know, the Supreme Court issued SAS Institute and Oil States. The PTAB survived, but its procedures are changing. The Office has issued Guidance on the Impact of SAS Institute on AIA Trial Proceedings, and the PTAB is holding a free “Chat with the Chief” webinar on Monday, …

PTAB Roundup

SCOTUS: Anxiously awaiting Oil States and SAS Institute? So are we, and it is not just us. The Court has yet to issue opinions in five cases argued in October and four others in November-December, including Masterpiece Cakeshop. Update: Supreme Court Decides Oil States and SAS Institute Inc. v. Iancu District Court: IPR estoppel – Reversing references does not change the ground. The …

PTAB Roundup

CAFC: Reversal, not remand, of insufficiently explained Board decision. A divided Federal Circuit reversed the Board’s obviousness decision in an IPR. The majority ruled that the technology was “not unusually simple” and “particularly straightforward,” and that the missing element “plays a major role in the subject matter claimed.” As a result, the Board erred by …