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

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

In the 35 Final Written Decisions issued by the Patent Trial and Appeal Board in May, the Board cancelled 413 (74.28%) of the instituted claims and declined to cancel 94 (16.91%) of the instituted claims. Patent owners conceded 49 (8.81%) of the instituted claims through motions to amend or disclaimer.


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Supreme Court Affirms Cuozzo : Agrees on BRI and Reviewability of Post-Grant Proceedings

Author: Ashley M. Winkler
Editor: Aaron J. Capron

Earlier this week, in Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. __ (2016), the Supreme Court issued its first decision reviewing post-grant proceedings created by the America Invents Act (AIA) and affirmed the Federal Circuit in the two questions on appeal. Both issues challenged provisions of the AIA. First, the Court considered whether 35 U.S.C. § 314(d) bars judicial review of decisions to institute post-grant proceedings by the United States Patent and Trademark Office (USPTO). Second, the Court reviewed whether the rulemaking authority in 35 U.S.C. § 316(a)(4) permits the USPTO to regulate application of the broadest reasonable interpretation standard (BRI) during claim construction before the Patent Trial and Appeal Board (PTAB).

Reviewability of Post-Grant Proceedings

The Court held that “Section 314(d) bars . . . challenge[s] to the Patent Office’s decision to institute inter partes review.” Writing for the Court, Justice Breyer noted that the text of § 314(d) expressly states that institution decisions “shall be final and nonappealable.” The Court stated that interpreting this language to allow judicial review would “undercut one important congressional objective, namely, giving the Patent Office significant power to revisit and revise earlier patent grants.”

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Federal Circuit Vacates and Remands PTAB’s “Midstream” Claim Construction Change

Author: Ashley M. Winkler
Editor: James D. Stein

In SAS Institute, Inc. v. ComplementSoft, LLC, Nos. 2015-1346 & 2015-1347 (Fed. Cir. June 10, 2016), the Federal Circuit found error in a final written decision rendered by the Patent Trial and Appeal Board. The Board adopted a new construction for a term it had construed differently in its institution decision. The Court stated that the Administrative Procedure Act (APA) prevents the Board from “chang[ing] theories in midstream without giving [the parties] reasonable notice of the change and the opportunity to present argument under the new theory.”

The Federal Circuit affirmed the Board’s decision for terms that had not been previously construed, but vacated and remanded the aspects of the Board’s decision relying on the new claim construction “so that the parties may address [the] new construction that the Board adopted in its final written decision after interpreting the claim differently before.” Judge Stoll wrote, “[i]t is difficult to imagine either party anticipating that already-interpreted terms were actually moving targets, and it is thus unreasonable to expect that they would have briefed or argued, in the alternative, hypothetical constructions not asserted by their opponent.”

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