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 …

PTAB Roundup

CAFC: Collateral estoppel across related patents. The Federal Circuit vacated the Board’s decision in an IPR because the Board applied an incorrect claim construction. The Court had previously construed a particular term in a related patent, and that same term was used in the patent-at-issue in the same way. Accordingly, collateral estoppel applied, and the same construction applied, too. The …

PTAB Roundup

The 2018 PTAB Bar Association Annual Conference will be March 22-23, 2018, at the Ritz-Carlton in Washington, D.C., with pre-conference sessions on March 21. The conference will bring together practitioners, in-house counsel, and members of the bench for a dynamic discussion of best practices, recent developments and trends, policy considerations, and much more. Time to …

PTAB Roundup

The 2018 PTAB Bar Association Annual Conference will be March 22-23, 2018, at the Ritz-Carlton in Washington, D.C., with pre-conference sessions on March 21. The conference will bring together practitioners, in-house counsel, and members of the bench for a dynamic discussion of best practices, recent developments and trends, policy considerations, and much more. The 2017 …