Tagged with Inter Partes

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

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

In the 60 Final Written Decisions issued by the Patent Trial and Appeal Board in December, the Board cancelled 649 (83.10%) of the instituted claims and declined to cancel 124 (15.88%) of the instituted claims.  Patent owners conceded 8 (1.02%) instituted claims through motions to amend or disclaimer.

ptab-stats-claim-and-case-disposition-ipr-claim-december-stats  Continue reading

Tagged , , , , , , , , ,

Recent PTAB Decisions Further Illuminate Denial of Review Under 35 U.S.C. § 325(D)

Authors: Kevin J. Spinella
Editor: Aaron J. Capron

Recently, the Patent Trial and Appeal Board (“PTAB”) denied grounds in petitions under 35 U.S.C. § 325(d) because the prior art and arguments relied on in the petitions were substantially similar to those presented during prosecution of the patents at issue.

For example, in Kayak Software Corp. v. IBM Corp. CBM2016-0075, Paper 16 (Dec. 15, 2016), the PTAB declined to institute a covered business method (CBM) petition under § 325(d).

In their Petition, the Petitioners used the exact combination of references that had been applied by the USPTO Examiner. The Petitioners also introduced a new reference not previously cited during prosecution as an additional means to demonstrate the unpatentability of U.S. Patent No. 7,072,849. Continue reading

Tagged , , , , , , ,

Federal Circuit PTAB Appeal Statistics – January 1, 2017

Authors: David C. SeastrunkDaniel F. Klodowski, Elliot C. Cook
Editor: Jason E. Stach

Through January 1, 2017, the Federal Circuit decided 155 PTAB appeals from IPRs and CBMs.  The Federal Circuit affirmed the PTAB on every issue in 120 (77.42%) of the cases, and reversed or vacated the PTAB on every issue in 13 (8.39%) of the cases.  A mixed outcome on appeal, where at least one issue was affirmed and at least one issue was vacated or reversed, occurred in 14 (9.03%) of the cases.

jan-2017-federal-circuit-stats-ipr-cbm-appeals-combined

Continue reading

Tagged , , , , , , , , ,