PTAB Roundup

Supreme Court: A number of PTAB cases are slated for the September 26 conference, including two cases questioning the Constitutionality of the AIA proceedings: Cooper v. Lee (separation of powers) and MCM Portfolio v. Hewlett-Packard (right to a jury trial and separation of powers).

CAFC: No Aqua in Veritas: After affirming the Board’s determination that the issued claims would have been obvious, the CAFC vacated and remanded the Board’s denial of the patent owner’s motion to amend in Veritas Techs. v. Veeam Software, No 15-1894 (Fed. Cir. Aug. 30, 2015). The CAFC held that denying Veritas’s motion to amend solely because Veritas failed to address whether the newly added features were known in the prior art was arbitrary and capricious, and error regardless of the ultimate resolution of In re: Aqua Products, Inc., No. 15-1177 (Fed. Cir. Aug. 12, 2016), which it took en banc two weeks before to determine whether the patentee bears the burden of showing the amended claims are patentable.

CAFC: wrong standard, right answer: Even though the PTAB applied the wrong claim construction standard, the CAFC affirmed the PTAB’s decision in an ex parte reexamination case, In re: CSB-System Int’l, No. 15-1832 (Aug. 9, 2016). The patent expired while the patentee’s appeal to the Board was pending. The CAFC rejected the Office’s arguments that the PTAB correctly applied the same claim construction standard as the examiner when reviewing the examiner’s decision, “reaffirm[ing] that once a patent expires, the PTO should apply the Phillips standard.” Nonetheless, the CAFC affirmed, finding the patentee’s claims unpatentable even under the narrower claim construction.

CAFC: mixed results unmixed: In a non-precedential decision with a dissent, the CAFC reversed-in-part the Board’s mixed results in two IPRs. The majority in Software Rights Archive v. Facebook, Nos. 15-1649, -1650, and -1651 (Fed. Cir. Sept. 9, 2016) agreed with the PTAB that several claims were unpatentable, but reversed the Board’s finding that other claims survived the petitioners’ challenges. Judge Chen dissented-in-part. He would have affirmed the Board with respect to some of the surviving claims.

PTAB: claims revived on remand: MotivePower, Inc. v. Cutsforth, Inc., IPR2013-00274, Paper 44 (Sep. 9, 2016) (Ward, Quinn, DeFranco). Upon finding that “the Board’s Final Written Decision does not provide enough explanation to support its finding of obviousness” for claims 1-24, the Federal Circuit remanded the case back to the Board. In a detailed 69-page decision, the Board repeated its previous conclusion for most of the claims, but found that the petitioner did not meet its burden for claims 5 and 8.

PTAB: sworn testimony from other proceedings: The amendments to the Rules of Practice for PTAB Trials promulgated on May 19, 2015, clarified that the routine discovery requirement for cross-examination applies to affidavit testimony prepared for the current proceeding. 37 C.F.R. § 42.51(b)(1)(ii). Two recent panel decisions address whether testimony from other proceedings may be excluded as hearsay. The panel in CaptionCall, LLC v. Ultratec, Inc., IPR2015-00637, Paper 98 (Sep. 8, 2016) excluded transcripts of deposition and trial testimony as inadmissible hearsay, while the panel in Apple Inc. v. VirnetX Inc., IPR2015-00811, Paper 44 (Sep. 8, 2016) denied a motion to exclude declaration testimony prepared for other proceedings as hearsay.

New Ways to Streamline Patent Examination: The USPTO is hosting a roundtable on September 28, 2016, to discuss more efficiently identifying prior art in applications by electronically importing prior art, search reports, and other information. For more information see the Director’s Forum and the Federal Register Notice.

PTAB Statistics Roundup: The Board’s July Trial statistics are now available. There were 157 petitions filed in July 2016 compared to 123 in July 2015 and 126 in July 2014. The Board’s ex parte appeal statistics for July are also posted. The Board decided 1,062 ex parte appeals, reducing the number of pending appeals from 17,617 to 17,078 cases, for a net decrease of 539 pending cases.

Opportunities at the Office: The Office is looking for a trademark attorney and patent examiners in the chemical, computer, and electrical arts. For details for these and other opportunities at the Office, click here.

Contributors: Jon Strang, Joshua Goldberg, and Mita Chatterjee. If you are interested in helping prepare the PTAB Roundup, please contact us at