PTAB Approves Grouping of Representative References in Granting Motion to Amend

Author: Neelaabh Shankar, PhD
Editor: James D. Stein

Due to the high institution and claim cancellation rates since their inception in 2012, AIA post-grant proceedings have been viewed by many as favoring petitioners over patent owners. Though the playing field seems to be leveling somewhat more recently, petitioners overall continue to see better results than patent owners at the PTAB.

Some patent owners have complained of the difficulty of amending claims in AIA proceedings. Thousands of claims have been canceled, but this earlier this week the Board granted just its sixth motion to amend allowing substitute claims, in Shinn Fu Company of America and Shinn Fu Corp. v. The Tire Hanger Corp., IPR2015-00208, Paper 24 (Apr. 22, 2016). The difficulty to amend stems, in part, from the requirement to “persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner.” Nike Inc. v. Adidas AG, 812 F.3d 1326, 1350 (Fed. Cir. 2016) (citing Idle Free Sys., Inc. v. Bergstrom, IPR2012-00027, 2013 WL 5947697 (PTAB June 11, 2013).)

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

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

In the 63 Final Written Decisions issued by the Patent Trial and Appeal Board in March, the Board cancelled 559 (65.00%) of the instituted claims and declined to cancel 251 (29.19%) of the instituted claims. Patent owners conceded 50 (5.81%) of the instituted claims through motions to amend or disclaimer. These numbers are considerably better for patentees than the February 2016 numbers, where 79.45% of all instituted claims were cancelled and only 18.12% of instituted claims survived.


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USPTO Submits Respondent’s Brief to High Court

Author: Saba N. Daneshvar
Editor: James D. Stein

The Supreme Court recently granted certiorari in Cuozzo Speed Technologies, LLC v. Lee, No. 15-446. The Supreme Court agreed to hear two issues appealed by Cuozzo: (1) whether the PTAB should use the broadest reasonable interpretation (BRI) standard for claim construction in IPR rather than the plain and ordinary meaning standard applied in district court; and (2) whether the PTAB’s decision to institute an IPR proceeding should be judicially reviewable on appeal from a final written decision. In its merits brief, Cuozzo argued that the answer to the first question should be “no” and the answer to the second question should be “yes.” The USPTO has now submitted its respondent’s brief on these issues. Argument is set for April 25, 2016.

Issue 1: PTAB’s Use of the BRI Standard

Regarding the first issue, the USPTO argues that the BRI standard is appropriate for IPR proceedings. Contrary to Cuozzo’s position, the USPTO urges that the PTAB’s use of the BRI standard accords with Congress’s design for IPR. First, the USPTO notes that “[t]he PTO has long applied the broadest-reasonable-construction standard in all agency proceedings in which patent claims may still be amended.” By authorizing the patentee to amend its claim during IPR, the USPTO contends Congress incorporated into IPR the principal features that had long justified use of the BRI standard (i.e. claim amendments). The USPTO also asserts the BRI standard is properly utilized during claim construction to choose among interpretations that are consistent with the text of the disputed claim and with the specification. Finally, the UPSTO asserts that, “[a]lthough inter partes review was intended to provide an alternative to costly and time-consuming litigation, it was not supposed to replicate in every instance the results that a district court would have reached.”

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