Tagged with Inter Partes Review

En Banc Federal Circuit to Decide Reviewability of PTAB Time-Bar Decisions

Authors: James D. Stein
Editor: Jason E. Stach

The Federal Circuit has found that it may not review a PTAB determination that an IPR petition was timely-filed within 35 U.S.C. § 315(b)’s 1-year bar. Achates Reference Publishing Inc. v Apple Inc., 803 F.3d 652 (Fed. Cir. 2015). The law may soon change, as the Federal Circuit recently granted Wi-Fi One’s petition for rehearing en banc of its September decision that it may not review the PTAB’s finding that Broadcom’s IPR petitions were not time-barred. Wi-Fi One, LLC v. Broadcom Corp., Nos. 2015-1944, -1945, -1946 (Jan. 4, 2017). Continue reading

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PTAB: What to Expect on Remand

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

Only a portion of Federal Circuit decisions on appeals from IPRs and CBMs have remanded the cases in full or in part to the Patent Trial and Appeal Board (“PTAB”). These remanded cases have been working their way through the PTAB, leading to new final written decisions.

While there are rules and statutes governing the timing of the trial phase of a PTAB proceeding, there are no such rules governing the remand process. Thus, a review of the PTAB docket is needed to determine what a party can expect on remand. While the procedures used on remand can be panel-specific, there are some similarities. Continue reading

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Federal Circuit Clarifies the Burden of Proof in Magnum Oil

Author: Shayda Shahbazi*
Editor: Aaron J. Capron

In its recent decision, In re Magnum Oil Tools International, No. 2015-1300, the Federal Circuit clarified the burden of proof for IPR proceedings. In particular, it held that the PTAB improperly shifted the burden of proof to the patent owner to disprove obviousness.

When filing its petition with the PTAB, McClinton argued that the claims at issue would have been obvious over a first and second set of prior art. While McClinton and its expert appeared to have fully addressed the first set of prior art, they only “incorporated by reference” the arguments from the first set onto the second set of prior art. In responding, patent owner Magnum contended, among other things, that McClinton’s analysis for the second set of prior art failed to “specify where each element of the claim is found” and to describe how a skilled artisan would have modified the second set of prior art. Despite these shortcomings, the PTAB found that McClinton had established a reasonable likelihood of success based on only the second set of prior art and instituted the IPR. Relying on that analysis in the Final Written Decision, the PTAB held that the claims at issue were invalid as being obvious over the second set of art.

Subsequently, McClinton and Magnum settled the dispute, in which McClinton agreed to not participate in any appeal.

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