The Current 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 Inaugural Conference was a sold-out event with close to 500 attendees – including attorneys from in-house and law firm offices around the country. Register Here to reserve your spot.

CAFC: Remanded to fully consider the petitioner’s arguments: The Court vacated the Board’s IPR decisions that had upheld claims to dynamic web page processing technology because the Board failed to address one of Microsoft’s two anticipation theories and certain aspects of its obviousness rationale. Microsoft Corp. v. Parallel Networks Licensing, LLC, Nos. 2016-2515, -2517, -2518, -2519, -2642, -2564, -2644, -2645, -2646 (Dec. 1, 2017) (nonprecedential) (Taranto, joined by Dyk and Schall).

CAFC: Patent did not limit “an internet protocol” to Internet Protocol: The Court affirmed the Board’s determination in IPR that an expired patent’s claims were invalid, turning aside the argument that “internet protocol” and “Internet protocol” should have been construed more narrowly to mean only the “IP” in “TCP/IP.” The Court explained that the intrinsic evidence, like the extrinsic evidence, supported the Board’s construction, since it suggested that more than one internet protocol existed, and the equivocal prosecution history did not disclaim scope. AIP Acquisition LLC v. Cisco Sys., Inc., No. 2016-2371 (Nov. 30, 2017) (nonprecedential) (Stoll, joined by Moore and Plager).

District Court: IPR helps plaintiff defeat § 101 challenge in Rule 12(b)(6) motion: The Court denied the defendant’s Rule 12(b)(6) motion to dismiss on the ground that the asserted patents are patent-ineligible under 35 U.S.C. § 101. The Court considered concurrent IPR proceedings in its Alice step two analysis. The defendant asserted that the claims recited routine and conventional subject matter, but it did not cite any art in its IPR demonstrating that was the case. In one instance, the defendant had to combine three references to cover the relevant claim limitations. Viewing this evidence in the light most favorable to the plaintiff, these claims survived the motion to dismiss. TriPlay, Inc. v. WhatsApp Inc., C.A. No. 13-01703-LPS-CJB (D. Del. Nov. 20, 2017) (Burke).

District Court: Stay lifted before reexamination certificate issues: The plaintiffs asked the Court to lift the stay pending reexamination after the Notice of Intent to Issue a Reexamination Certificate (NIRC) issued but before the reexamination certificate itself issued. The defendants opposed, contending that the reexamination was not yet complete and the plaintiffs still needed to correct alleged inaccuracies in the NIRC regarding the Examiner’s reasons for patentability. The Court lifted the stay, finding that “for all intents and purposes” the reexamination was complete. The plaintiffs confirmed that they do not plan to take further action regarding the reexamination and that the defendants cannot pursue any inequitable conduct argument in the reexamination. Tristar Prods., Inc. v. Nat’l Express, Inc., C.A. No. 13-7752, ECF No. 159 (ES)(MAH) (D.N.J. Nov. 29, 2017) (Hammer).

PTAB: “Technological invention” not eligible for CBM: A patent is eligible for CBM only if it is directed to a business method and it is not “a patent for [a] technological invention[].” AIA § 18(d)(1). In this case, the Board denied CBM review because the claims were within this technological invention exception despite a previously instituted CBM on the same patent. The claims generally addressed preventing the operation of unlicensed software on a computer by requiring that the non-volatile memory of a computer’s BIOS contain a “verification structure” that includes a record of a software license. The Board found that the challenged claims addressed “technical problems resulting from the vulnerability of license authentication and software restriction using conventional techniques,” noting the deficiencies of previous software- and hardware-based approaches to license verification. The Board also found that the challenged claims provided a technical solution to those problems by placing the “verification structure” in the non-volatile memory of a BIOS, making it more difficult to tamper with the record of the license than in previous approaches. HTC Corp. v. Ancora Tech., Inc., CBM2017-00054, Paper No. 7 (Dec. 1, 2017) (Elluru, joined by Chang and Cherry).

PTAB: Aqua Products guidance for motions to amend: The PTAB issued guidance on November 21, 2017, for motions to amend claims in AIA proceedings in light of the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). The patent owner no longer bears the burden to demonstrate the patentability of its claims. “Beyond that change, generally speaking, practice and procedure before the Board will not change.” See the guidance for further details.

PTAB: New SOP for Federal Circuit remands: The USPTO issued new post-remand procedures in Standard Operating Procedure 9. The Board’s goal is to issue decisions on remand within six months of the Federal Circuit’s mandate, but that time period may be extended. The Chief Judge, the Deputy Chief Judge, or a delegate will discuss each remanded case with the Board panel before the mandate issues. The procedure for each remanded case will vary, but the SOP provides the following examples as a guide:

PTAB Statistics: The Board posted new AIA Trial statistics, reporting that 119 IPR, 4 PGR, and 5 CBM petitions were filed in October 2017, the first month of FY 2018. The Board’s institution rate in the first month of FY 2018 was 49% (87 petitions instituted and 90 petitions denied).

*Contributors: Jonathan Strang (ed.), Thomas Donovan, Kevin McNish, Fahd Patel, Steven Peters, Todd Siegel, Dan SmithKenneth Weatherwax, Ben Evans, Christopher GeyerJohn Holley, Arvind Jairam, Thomas King, Thomas Pasternak, Rebecca Rabenstein, Diva Ranade, Surenda (Kumar) Ravula, David Roadcap, and Abhay Watwe. These case summaries are factual in nature and do not reflect the opinions of the contributors, their law firms, 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.