The Current 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 Court granted the motion. Because it requested remand after SAS’s “significant change in the law,” the petitioner/appellant did not waive the issue by failing to raise it before the Board. Further, remand was appropriate even though the Board instituted on all claims (but not all grounds), as the petition, not the institution decision, determines the scope of any instituted review. adidas AG v. Nike, Inc., Nos. 2018-1180, 1181 (July 2, 2018) (Moore, joined by Wallach and Taranto).


District Court: Plaintiff lost at PTAB, filed new suit asserting different claims. After the Federal Circuit affirmed the Board’s decision finding all asserted claims unpatentable, the plaintiff filed a new suit asserting different claims from the same patent. The parties agreed that the first case should be dismissed, but disagreed on the scope of the dismissal. The defendants sought dismissal the plaintiff’s claims with prejudice, and their own defenses and counterclaims without prejudice. The plaintiff disagreed, contending that dismissal should be contingent on the defendants’ agreement that the previously unasserted claims are valid and enforceable. The court dismissed plaintiff’s first infringement suit with prejudice, and defendants’ defenses and counterclaims without prejudice. It also noted that, in the new action, the defendants are free to argue that this dismissal of the first has preclusive effect. Affinity Labs Tex. LLC v. Blackberry Ltd., No. 4:14-cv-03031, ECF No. 162 (N.D. Cal. July 5, 2018) (Rogers).


PTAB: Five decisions designated “Informative”: The Board has four designations for issued opinions: (1) precedential; (2) informative; (3) representative; and (4) routine, which it describes here.

Unlike precedential decisions, informative decisions are not binding on panels, but instead provide “the Board’s general consensus on recurring issues.” Two of the PTAB’s five newly designated informative decisions arose from ex parte prosecution, and the three others address AIA proceedings:

  • Ex parte Ditzik, Appeal No. 2018-000087 (March 2, 2018). The Board affirmed the Examiner’s rejections on the basis of issue preclusion. The Appellant had raised a number of arguments, including the difference in standards in proof between the forums, differences in claim language, and alleged errors in district court and Federal Circuit appeals due to incorrect trial testimony, but the Board found them all unpersuasive.
  • Ex parte Jung, Appeal No. 2016-008290 (March 22, 2017). The Board addressed the proper construction of the claim language “at least one of A and B.” Under SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 885-86 (Fed. Cir. 2004), the plain and ordinary meaning of “at least one of A and B” is the conjunctive “at least one of A and at least one of B.” The Examiner may adopt a different meaning if called for by other claim language, the specification, or the prosecution history.
  • Colas Sols. Inc. v. Blacklidge Emulsions, Inc., IPR2018-00242, Paper 9 (February 27, 2018). Unlike the one-year time bar of 35 U.S.C. §315(b), joinder does not exempt a petition from declaratory judgement bar 35 U.S.C. §315(a)(1).
  • Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper 55 (August 7, 2013). The Board set forth 12 general guidelines for taking a deposition in a foreign language.
  • Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 (January 19, 2018). The Board set forth guidance on establishing “good cause” to seal a filed document from public view. The movant must demonstrate that: (1) the information is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there is a genuine need to rely on the information sought to be sealed, and (4) the interest in maintaining confidentiality outweighs the strong public interest in having an open record.

Comments on proposed change to IPR/PGR/CBM claim-construction standard. The PTO announced a Notice of Proposed Rulemaking to change the claim-construction standard in AIA proceedings from the broadest reasonable interpretation to the district court’s narrower Phillip’s standard. Comments were due by July 9, 2018, and are collected here.


Judicial Conferences in San Jose and Dallas. The Patent Trial and Appeal Board will host a 2018 PTAB Annual Judicial Conference at the Silicon Valley Regional Office in San Jose, California on Thursday, July 26, 2018 from 9 a.m. to 4:30 p.m. PT on the 1st floor.

It will also host a 2018 PTAB Annual Judicial Conference at the Texas Regional Office in Dallas, Texas on Tuesday, July 31, 2018 from 9 a.m. to 4:30 p.m. CT in the Oak Corner Suite at the Meadow Conference Center.

For a full listing of the dates, times, and locations of all upcoming Judicial Conferences, please visit the Board’s 2018 PTAB Annual Judicial Conferences page.


PTAB Statistics The latest AIA trial statistics show that institution rates are 61% so far for FY 2018 compared to 63% in FY 2017 and 67% in FY 2018. No CBMs were filed in June. Only 30 CBMs have been filed so far in FY 2018 compared to 43 PGRs and 1,117 IPRs.