PTAB Can Consider § 101 When Reviewing Amended Claims

The Patent Trial and Appeal Board has designated as precedential a decision holding that the Board may consider § 101 when evaluating the patentability of a patent owner’s proposed substitute claims in a motion to amend. The decision clarifies the impact of the Federal Circuit’s Aqua Products decision on the issue of subject matter eligibility of substitute claims. Continue reading “PTAB Can Consider § 101 When Reviewing Amended Claims”

Now in Effect – PTAB’s New Motion to Amend Procedures


As recently noticed in the Federal Register, the Patent Trial and Appeal Board’s (PTAB or Board) new motion to amend (MTA) procedures are now in effect as a one-year pilot program.  [1]  In sum, the patent owner (PO) now has the option to ask for preliminary guidance from the Board about its substitute claims in a first MTA, and can file a revised motion—with new substitute claims—after either the petitioner’s opposition paper or, if guidance was requested, after the Board issues its preliminary guidance.  The revised MTA then generates a further opposition opportunity for the petitioner on a tight, six-week turnaround.  In this article, we highlight important details of the new procedures, discuss the impact to PTAB practice, and provide some practice pointers to consider when forming PTAB strategy under the new procedures. Continue reading “Now in Effect – PTAB’s New Motion to Amend Procedures”

Law of the Case? Not in our Forum! Continuing Trend of PTAB Aggressively Using Its Discretionary Powers to Deny Institution of IPRs

By statute, Congress gave the Patent Trial and Appeal Board (“PTAB”) broad discretionary power in deciding whether or not to institute an inter partes review (“IPR”) proceeding.[1] Recently, the PTAB’s application of this discretionary authority to deny IPR petitions has continued to be aggressive in frequency and scope.

Several possible rationales for this continued upward trend exist including: (1) docket management, (2) concerns with protecting review process/patent owners from “abuse”, and (3) the SAS Institute Inc. v. Iancu decision.[2] Continue reading “Law of the Case? Not in our Forum! Continuing Trend of PTAB Aggressively Using Its Discretionary Powers to Deny Institution of IPRs”

PTAB Panel Estops Petitioner Under 315(e)(1)

A panel of judges at the Patent Trial and Appeal Board (“the Board”) recently estopped a Petitioner from joining a petition for inter partes review under 35 U.S.C. § 315(e)(1). The panel’s order denying institution and joinder is notable for its interpretation of the Federal Circuit’s decision in Shaw Industries Group v. Automated Creel Systems, Inc. 817 F.3d 1293 (Fed. Cir. 2016). The panel’s interpretation is markedly different from an earlier application of that case by Judge Robinson of the U.S. District Court for the District of Delaware.

Continue reading “PTAB Panel Estops Petitioner Under 315(e)(1)”

Successful Motions to Amend Claims at the PTAB

In April, the USPTO released the results of a study on claim amendments in AIA proceedings. The study showed that of 118 Motions to Amend Claims filed at the PTAB, just six had been granted. The abysmal success rate of patent owners seeking to amend claims (just 5% by the PTO’s own numbers) has been a source of strong criticism of the PTAB.

For patent owners searching for a successful amendment strategy, we’ve collected the allowed claim amendments from those six successful motions to amend at the PTAB, which are presented below: Continue reading “Successful Motions to Amend Claims at the PTAB”

Extending Depositions in IPRs

In the vast majority of depositions taken pursuant to an inter partes review, the deponent will have previously provided direct testimony via a declaration. The typical IPR deposition is therefore an opportunity for an opposing party to cross examine the witness, and the PTAB has set the standard duration of cross examination at seven hours. 37 C.F.R. 42.53(c)(2) (further providing four hours for re-direct examination and two hours for re-cross examination).

The seven-hour cross examination rule does contemplate extending the duration of a deposition, as may be “stipulated by the parties or ordered by the Board.” Id. Where each party retains an expert fact witness in an IPR, it can be mutually beneficial for the parties to stipulate to extended depositions. In one extreme case, the parties agreed to stipulated extensions such that the deposition of a single witness extended over a five-day period. Continue reading “Extending Depositions in IPRs”

Federal Circuit to Review PTAB’s Amendment Practice

Earlier this month the Federal Circuit granted en banc review of the PTAB’s process for reviewing Motions to Amend Claims in AIA proceedings. In the case In re Aqua Products, the patent owner argues that it met the statutory requirements for making a claim amendment but the PTAB failed to enter the amendment based on a erroneous interpretation of the statute which results in additional, onerous requirements being levied on a patent owner. Continue reading “Federal Circuit to Review PTAB’s Amendment Practice”

Rehearing an Institution Decision

The Supreme Court recently affirmed that a decision by the PTAB regarding institution of an inter partes review is “final and nonappealable.” Cuozzo Speed Tech. v. Lee, No. 15-466, slip op. at 7 (U.S. June 20, 2016); see 35 U.S.C. §314(d). Without the ability to appeal an institution decision, a dissatisfied party is often left to file a request for rehearing with the Board. 37 C.F.R. § 42.71(d). Continue reading “Rehearing an Institution Decision”

Collateral Estoppel in an IPR

When a patent or patent family is subject to multiple validity challenges, a petitioner in an inter partes review may seek to assert collateral estoppel to preclude relitigation of issues decided in a previous proceeding. Collateral estoppel, which is also called issue preclusion, is appropriate where: “(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against whom issue preclusion is asserted] had a full and fair opportunity to litigate the issue in the first action.” In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994). Collateral estoppel is “premised on principles of fairness,” which leaves considerable latitude to the PTAB in deciding whether to apply the doctrine. Continue reading “Collateral Estoppel in an IPR”

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The opinions expressed on this blog are those of the author and are not to be construed as legal advice.

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