IPR and CBM Statistics for Final Written Decisions Issued in April 2016

Authors: Daniel F. Klodowski, Elliot C. CookDavid C. Seastrunk
Editor: Aaron L. Parker

In the 46 Final Written Decisions issued by the Patent Trial and Appeal Board in April, the Board cancelled 651 (88.45%) of the instituted claims and declined to cancel 51 (6.93%) of the instituted claims. Patent owners conceded 34 (4.62%) of the instituted claims through motions to amend or disclaimer. These decision outcomes are considerably worse for patentees than the decisions issued in March 2016, when 65% of all instituted claims were cancelled and nearly 30% of instituted claims survived.


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PTO Designates New Precedential Opinions on Additional Discovery, One-Year Time Bar, Substitute Claims, and Interpretation of § 312(a)(2)

Author: Alex Kwan-Ho Chung, Ph.D.
Editor: Jason E. Stach

On Tuesday, May 10, 2016, the PTAB designated the following five decisions as precedential, providing authority on various procedural issues including: criteria for additional discovery; the nature of service triggering the one-year time bar; the patentee’s burden to demonstrate the patentability of substitute claims; and an interpretation of § 312(a)(2).

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PTAB v. District Court: When a Claim is Indefinite Lacks Reasonable Certainty

Author: Anthony A. Hartmann
Editor: James D. Stein

In a Petition for Inter Partes Review, a petitioner may challenge patent claims as being anticipated and/or obvious. 35 U.S.C. §311(b). A challenge based on 35 U.S.C. §112, such as indefiniteness, is unavailable. However, indefiniteness may become an issue during claim construction, particularly for means-plus-function limitations.

In nearly a dozen cases, the PTAB has denied institution because it found that the petitioner did not show a limitation to be definite. In certain of those cases, the PTAB has concluded that “Petitioner has not demonstrated that the recitation of [a limitation]… viewed in light of the specification and prosecution history, sufficiently informs those skilled in the art about the scope of the invention with reasonable certainty,” and thus “has not shown a reasonable likelihood that it would prevail.” Medshape, Inc. v. Cayenne Medical, Inc., IPR2015-00848 (Sept. 14, 2015) (Paper 9) at 11-12. In Medshape, the PTAB applied the Supreme Court’s opinion in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014), that a claim is indefinite if it fails to inform, with reasonable certainty, about the scope of the invention. Id. at 8. Continue reading

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