PTAB Roundup


Supreme Court: In early determinations for the 2015-2016 Term, the Supreme Court granted no new certiorari petitions in patent cases. In appeals arising from PTAB proceedings, the Court denied petitions challenging IPRs’ constitutionality (MCM Portfolio, Cooper v. Lee), statutory interpretation of AIA provisions (Trading Technologies, GEA Process), other AIA issues (Merck & Cie, MacDermid) and reexaminations (Pactiv and MacDermid).

CAFC: Cuozzo bars appeal of one-year bar: In Wi-Fi One v. Broadcom, No. 15-1944 (Fed. Cir. Sept. 16, 2016), the CAFC held that the Supreme Court’s decision in Cuozzo did not implicitly overrule the CAFC’s decision in Achates; the PTAB’s one-year bar determinations are still unreviewable on appeal. Judge Reyna wrote separately, concurring with the result, but stating that “the time bar set forth by 35 U.S.C. § 315(b) should be subject to review.”

CAFC: Cuozzo stops appeal of assignor estoppel: In Husky Injection Molding Systems v. Athena Automation, No. 15-1726, -1727 (Fed. Cir. Sept. 23, 2016), the CAFC held that, under Cuozzo, it does not have jurisdiction to review the PTAB’s decision whether to apply assignor estoppel. Judge Plager dissented, stating “the majority’s view may contribute to the already-existing confusion regarding which matters this court can review on appeal from a final decision by the Board.” On the merits, the panel was unanimous, vacating the Board’s decision on incorporation by reference and its finding of no anticipation and remanding for further consideration.

CAFC: wrong analysis, right answer: The CAFC affirmed the PTAB’s obviousness determination in ClassCo v. Apple, No. 15-1853 (Fed. Cir. Sept. 22, 2016), even though the PTAB erred by giving no weight to objective evidence of nonobviousness. The CAFC found that the objective evidence was insufficient to overcome the “strong” showing of obviousness in view of the prior art.

PTAB: statutory disclaimer may result in pre-institution adverse judgment: In Smith & Nephew, Inc. v. Arthrex, Inc., IPR2016-00917, Paper No. 12 (Sept. 21, 2016), the patent owner disclaimed all of the challenged claims and asked the Board to deny institution. After additional briefing, the Board determined that it had discretion to treat the pre-institution disclaimer as a request for adverse judgment under 37 C.F.R. § 42.72(b), and did so, triggering the patent owner estoppel of 37 C.F.R. § 42.72(d)(3).

PTAB: No perjury warning, no weight: The Board did not give any weight to a purported declaration in IBM v. Intellectual Ventures II LLC, IPR2015-01323, Paper No. 38 (Sept. 27, 2016) because it lacked a perjury warning pursuant to 37 C.F.R. § 1.68. Without that evidence, the petitioner was unable to show that a thesis was published in time to qualify as prior art. The Board also looked to a properly sworn declaration from the thesis advisor, but found that the declarant did not show public availability.

PTAB: Design-patent petition denied under § 325(d): Under 35 U.S.C. § 325(d), the Board has the discretion to deny institution if the same or substantially the same prior art was already presented to the Office. In Graco Children’s Products, Inc. v. Kolcraft Enterprises, Inc., IPR2016-00810, Paper No. 8 (Sept. 28, 2016), the Board exercised that discretion, refusing to revisit prior art it had already addressed during an appeal during prosecution. The Board also declined to revisit whether the patent owner antedated another reference by submitting a declaration pursuant to 37 C.F.R. §1.131(a) during prosecution before the examiner.

New PTAB fees proposed: The Office recently proposed fee increases for ex parte appeals to the PTAB (25% increase), and for IPRs, PGRs, and CBMs as shown in the following table from the official Notice:

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Public comments are due December 2, 2016.

PTAB Statistics Roundup: The Board’s August Trial statistics are now available. There were 143 petitions filed in August 2016 compared to 177 in August 2015 and 176 in August 2014. The Board’s ex parte appeal statistics for September are also posted. The Board decided 1,644 ex parte appeals, reducing the number of pending appeals from 16,438 to 15,504 cases, for a net decrease of 934 pending cases.

Opportunities at the Office: The Office launched its Outreach to Hispanic Millennials on October 4, 2016. Also, the Office is looking for a trademark attorney and patent examiners in the computer and electrical arts. For details for these and other opportunities at the Office, click here.

Contributors: Jon Strang, Thomas Donovan, Kevin McNish, Fahd Patel, Steven Peters, Todd Siegel, and Kenneth Weatherwax. These cases summaries are factual in nature and do not reflect the opinions of the contributors or the PTAB Bar Association. Individual contributors do not draft or otherwise have any substantive input into summaries of any case in which the contributor (or his or her firm) was involved.