Obviousness v. Anticipation: That Which Doesn’t Disclose Still Could Teach

In CRFD Research, Inc., v. Matal, [2016-2198] (December 5, 2017), the Federal Circuit affirmed two Final Written Decisions invaliding claims of U.S. Patent No. 7,191,233 on user-directed transfer of an on-going software-based session from one device to another device, and reversed one Final Written Decision that the claims were not obvious.

What is interesting about this case beyond the fact that a patent owner should have to simultaneously defend three IPR attacks on its patent, the loss of any one of which would be fatal, is the Federal Circuit’s reversal of the Board’s determination that Hulu had not shown the challenged claims to have been obvious.  The Federal Circuit said “the Board erred, both in how it performed its obviousness analysis and in the merits of its determination of nonobviousness.”

The Board concluded that the Bates reference did not anticipate certain challenged claims because it did not meet the claim requirement of “transmission of session history after discontinuation.”  Hulu complained, and the Federal Circuit agreed that the Board improperly
relied on its finding that Bates did not anticipate various asserted claims to support its finding of nonobviousness without considering whether Bates suggests transmission of session history after
discontinuation.  The Federal Circuit said that “Even if a reference’s
teachings are insufficient to find anticipation, that same reference’s teachings may be used to find obviousness.”

Hulu further argued that it would have been obvious, based on Bates, to
transmit session history after session discontinuation.  Hulu argued the obviousness of the claims based upon Bates, but the Board declined to institute on grounds of redundancy.  The Federal Circuit noted that Hulu expressly incorporated this argument as part of other grounds of unpatentability on which the Board instituted trial.  The Federal Circuit found that:

To bar Hulu from pressing an argument it raised in a ground the Board found “redundant” and that it expressly incorporated into other proposed grounds of unpatentability on which the Board instituted would not only unfairly prejudice Hulu, but would also raise questions about the propriety of the Board’s redundancy  decision.

Of course, even if it does “raise questions about the propriety of the Board’s redundancy decision,” that should not be a concern of the Federal Circuit because according to Cuozzo institution decisions are not reviewable.  The Federal Circuit went on to find that Bates did in fact sufficiently teach what it did not exprsessly disclose, and reversed the Board’s determination that the claims were not shown to be obvious.

This case illustrates that some of the mischief that arises from a Board’s finding of redundancy.  The petitioner is allowed to use the arguments in the non-instituted redundant ground to support its position in the instituted grounds — at least if they are sufficiently “incorporated.”  Another problem with redundancy is that the estoppel effect is unclear.  The Federal Circuit has indicated that estoppel does not apply to grounds that are not instituted.  HP Inc. v. MPHJ Tech. Inv., LLC, 817 F.3d 1339, 1347-48 (Fed. Cir. 2016).  If this interpretation applies to grounds denied for redundancy, it means that a patent owner could prevail in the IPR, and later face a challenge based upon the redundant ground — one found by the Board to indistinguishable from the ground on which the patent owner prevailed.

It May Have Just Gotten a Little Easier to Amend Claims in an IPR; a Factionated Federal Circuit Holds that Petitioner has the Burden to Show Unpatenability

In Aqua Products, Inc., v. Matal, [2015-1177] (October 4, 2017), a plurality of the Federal Circuit en banc held that §316(e) requires the petitioner to prove all propositions of unpatentability, including for amended claims.

The “decision” consists of five opinions spanning 148 pages: (1) the opinion of the plurality of five judges, joined by two who concur in the result; (2) a separate opinion by three of the five members of the plurality;  (3) a separate opinion by the two judges who concurred in the result, joined in part by four judges; (4) a dissent by four of the judges, in which the two concurring judges join in part; and (5) a separate dissent by two of the four dissenters.

The 66 page plurality opinion of five judges (joined by an additional two who concurred in the result), vacated the rejection of Aqua’s motion to amend its claims, and remanded the Final Written Decision to the Board for reconsideration with the burden of persuasion with respect to the patentability of Aqua’s amended claims on the petitioner, and to consider the motion on the entire record.

The plurality opinion finds the statute unambiguously places the burden on the petitioner, but because six of the eleven judges found the statute ambiguous, the plurality opinion dove into a detailed analysis of whether the USPTO’s actions were entitled to Chevron or Auer deference.  While a delight for Administrative Law aficionados, the bottom line is that the most reasonable reading of the AIA is one that places the burden of persuasion with respect to the patentability of amended claims on the petitioner, and the Board must  consider the entirety of the record before it when assessing the patentability of amended claims, and must justify any conclusions of unpatentability with respect to amended claims based on that record.

Posted in IPR

Board Was Mixed Up Over Blender Patent

In Homeland Housewares, LLC v. Whirlpool Corp., [2016-1511](August 4, 2017), the Federal Circuit reversed the PTAB’s determination that Whirlpool’s U.S. Patent No. 7,581,688 relating to household blender was not anticipated by U.S. Patent No. 6,609,821.

The patent claims a pre-programmed, automated blending cycle designed to blend items “by repeatedly dropping to a speed slow enough to allow the blender contents to settle around the cutter assembly, and then returning to a [higher] speed suitable for processing the contents.”  It was it was well known that a user could manually pulse between a high speed and a low speed to achieve efficient mixing.  Thus, in the words of the Federal Circuit “the claimed automatic blending routine was, in the prior art, done manually.”

Claim 1 provided that during pulsing, “the speed of the cutter assembly is reduced from the operating speed to a predetermined settling speed.” The Federal Circuit noted that the Board failed to explicitly construe “settling speed,” even though the parties disagreed about its meaning.  Whirlpool urged a construction the essentially required an empirical determination of the settling speed, while Homeland urged a construction that that “settling speed” means any comparative low speed less than the operating speed.  The Federal Circuit found that both parties were wrong, and that the broadest reasonable construction of “a predetermined settling speed” is a speed that is slower than the operating speed and permits settling of the blender contents.

With this construction the Federal Circuit found that the Wulf reference’s teaching of  alternating between high and low speeds “permits the material being blended to fall back to the region of the cutting knives” met the claim language.  While the Board credited Whirlpool’s exert testimony because it was unrebutted, the  Federal Circuit said that expert testimony should be disregarded when it is plainly inconsistent with the record.

The Federal Circuit found all of the claims anticipated, and vacated the decision of the Board.

Make Patents Great Again (or at least Make them STRONGER)

Senators Coons, Cotton, Durbin, and Hirono have introduced the STRONGER Patents Act of 2017, proposing a large number of improvements to U.S. patent law.  While the Bill does a lot to improve patents from an inventor’s perspective, the Bill does leave undone at least a few critical issues:

  1.  The Bill does not fix the abstract idea issue under §101 created by Alice.
  2. The Bill does not fix the ambiguity in the definition of patentable subject matter under §102 recently brought to light in Helsinn.
  3. The Bill does not fix the requirement that a successful appellant still must reimburse the USPTO for unsuccessfully defending a rejection in district court, as recently explained in Nantkwest.

As shown in the summary below, what the bill primary does is bring balance to IPR/PGR proceedings.

Sections 102(a)/103(a) – Elimination of BRI

Sections 102(a)/103(a) amend 35 USC 316(a)/326(a) to construe claims in an IPR/PGR according to their ordinary and customary meaning, and considering any prior construction by a court.  The current application of “broadest reasonable interpretation” makes claims more vulnerable in an IPR/PGR.

Sections 102(b)/103(b) Clear and Convincing Evidence Standard

Sections 102(b)/103(b) amends 35 USC 316(e)/326(e) to require proof of invalidity by clear and convincing evidence.  The current burden of proof of “preponderance of evidence” makes claims more vulnerable in IPR/PGR than in a court where the burden is by clear and convincing evidence.

Sections 102(c)/103(c) Requires Standing to Initiate

Sections 102(c)/103(c) amends 35 USC 311(d)/321(d) to require that a Petitioner have standing, i.e., have been charged with infringement.  Currently anyone can bring an IPR/PGR, regardless of whether they have been charged with infringement; this section restricts who can initiate a proceeding.

Sections 102(d)/103(d) One Challenge Per Claim

Sections 102(d)/103(d) amend Amends 35 USC 314(a)/324(a) to add a subsection (2) that bars review of a claim if there has been a previously instituted IPR/PGR on that claim. This allows only one IPR or PGR on each claim.  It is not limited to the same petitioner, and is triggered by institution, not a final written decision.

Sections 102(e)/103(e) Interlocutory Appeal of Institution Decisions

Sections 102(e)/103(3) amend 35 USC 314(d)/324(c) and add 314(e)/314(f) allowing certain appeals of institution decisions.
New sections 314(e)/324(f) would permit appeals of institution decisions in procedural grounds, but not as to the substantive patent law determination of unpatentability.

Sections 102(f)/103(f) One Challenge Per Patent

Section 102(f)/103(f) amend 35 USC 315/325 to prevent a petitioner from filing a second IPR/PGR unless the patent owner has charged petitioner with infringement of additional claims. This limitation together with the new limitation in 314(a) of one IPR per claim, restricts multiple IPRs on a single patent.

Sections 102(f) Improved Estoppel in IPR’s

Section 102(f) amends 35 USC 315 to bar a petitioner after an institution decision from raising any 102 or 103 grounds in a court or ITC proceeding, unless based public use, on sale, or otherwise available to the public. This substantially strengthens estoppel, but it still leaves a gap allowing the use of non-documentary prior art that corresponds to documentary prior art,.  There is no parallel estoppel provision for PGRs.

Sections 102(g)/103(g) Defines Real Party in Interest

Sections 102(g)/103(g) amend 35 USC 315(f).325(g) to define real party in interest as anyone who directly or indirectly makes a financial contributes to the petition. This expands definition of real party in interest to anyone who funds the proceedings.

Sections 102(g)/103(g) Provides Discovery of Real Party in Interest

Sections 102(g)/103(g) amends 35 USC 316(a)(5)/326(a)(5) to add subpart (B) providing for discovery about the real parties in interest.
Expands discovery relating to real party in interest.

Sections 102(h)/103(h) Bars Institution after Final Court Decision

Sections 102(h)/103(h) amend 35 USC 315/325 by adding new subpart (c)(1) that bars institution of an IPR after final judgment by the ITC or a court as to the validity of the claim under 102 or 103.
Once the ITC or a court has ruled on the validity of a claim, no one can challenge the claim in an  IPR.  However, (c)(1) only bars institution, not maintenance of the IPR/PGR, and (c)(2) only requires termination if a validity determination is affirmed on appeal.  A losing litigant might be able to get a second shot at the patent by waiving appeal, and continuing an already instituted IPR.

Sections 102(h)/103(h) Stays Proceedings Pending Court Appeal

Sections 102(h)/103(h) amend 35 USC 315/325 by adding new subpart (c)(2) which requires that the USPTO stay any IPR after the ITC or Court has entered a final judgment, while an appeal is possible or pending.  During concurrent IPR and litigation, if the ITC or Court gets to final judgment first, the IPR must be stayed pending appeal.

Sections 102(i)/103(i) Create Expedited Reexamination

Sections 102(i)/103(i) add a new 35 USC 316A/326A with a subpart (a)(3) that gives the patent owner the option to have a reasonable number of substitute claims examined in a new expedited IPR/PGR reexamination.

Sections 102(i)/103(i) Ease Burden of Amending Claims

Sections 102(i)/103(i) add new 35 USC 316A(c)(1)/326A(c)(1) defining amendment practice before the PTAB, and provides that the patent owner need only show that the amendment addresses the unpatentability on an instituted ground, meets the written description requirement, and does not enlarge the scope of the claims. New sections 316A(c)/326A(c) would relieve patent owners of the some of the burdens imposed by the PTAB in Idle Free Sys. v. Berstrom, Inc.

Sections 102(i)/103(i) Add Structure to Amendment Process

Sections 102(i)/103(i) add new 35 USC 316A(c)(2)/316A(c)(2)/  allowing petitioners to present new evidence to respond to amendments proposed by the patent owner, and allowing patent owner an opportunity to respond to new evidence submitted by petitioner.

Sections 102(i)/103(i) add new 35 USC 316A(c)(3)/326A(c)(3) allowing the PTAB to obtain an expedited patentability report.  Any party can respond to the report and the ordering of the report constitutes good cause for extending the proceeding beyond one year.

Sections 102(i)/103(i) also add new 35 USC 316A(c)(3) allowing the PTAB to order expedited reexamination on a claim in lieu of making a Final Written Decision on that claim.

Finally Sections 102(i)/103(i) also add new 35 USC 316A(d)/326A(d) allowing the patent owner to move for expedited reexamination in lieu of continuing the proceeding.  If granted, the patent owner must replace all of the instituted claims.  The petitioner has no right of appeal.

Section 104 Separates Institution and Final Written Decisions 

Section 104 amends 35 USC 6 to add subsection (c)(2) to provide that no board member who participates in an institution decision can also participate in hearing the review.  This eliminates the potential for confirmation bias, where a Board member who decided to institute also decides whether that institution decision was correct.

Section 105 Eliminates of Anonymous Reexaminations

Section 105 amends 35 USC 302(a) to require disclosure of the real party in interest in filing a request for reexamination.  This eliminates anonymous reexaminations.

Section 105 Restricts Reexaminations bu Defendants

Section 105 amends 35 USC 302 to add a subsection (d) barring reexamination more than a year after the requester is served with a complaint alleging infringement of the patent.

Section 106 Creates Presumption in Favor of Injunctions

Section 106 amends 35 USC 283 to provide a presumption that the patent owner is entitled to an injunction.  Gives effect the Constitutional mandate of exclusive rights to authors and inventors.

Section 107 Eliminates Fee Diversion

Section 107 Eliminates the diversion of USPTO user fees from the Office.

Section 108 Eliminates Knowledge of Patent from Inducement

Section 108 Amends 35 USC 271 to define inducement in subsection (b) as causing the actions that constitute infringement regardless of knowledge of the patent.

Section 108 Expands Inducement

Section 108 amends 35 USC 271(f) to add subsection (3)(A) to make inducement by the provision of an infringing design an act of infringement.

Section 108 also amends 35 USC 271(f) to add subsection (3)(B) to make inducement by the provision of an infringing specification an act of infringement.

Section 108 also amends 35 USC 271 to add section (j) eliminating the requirement for inducement or contributory infringement that the steps be performed by a single entity.

Section 109 Clarifies that Institutions of Higher Learning are Microentities

Section 109 amends 35 USC 123(d) to clarify that institutions of higher learning and their related patent foundations and other entities are microentities.  Nothing is done about their sovereign immunity in challenges to the patent.

Section 110 Expedites Infringement Actions by Small Business

Section 110 Creates a Patent Pilot program for expediting infringement cases involving small businesses.

Section 110 Makes Search Information More Widely Available

Section 110 amends Section 41(i) to required that the USPTO make freely available the patent and trademark information available at its Public Search Facilities.

Sections 201-203 Regulates Rogue and Opaque Letters

Sections 201-203 empower the FTC to take action against the bad faith assertion of patent rights.

Section 204 Preempts State Anti-Troll Laws

Section 204 preempts state laws on patent demand letters, but allows the states to enforce the federal prohibition of rogue and opaque letters

Double-Checking the PTAB

The Federal Circuit’s docket is burgeoning with Patent Office appeals.  Three years ago there were 118 appeals from the USPTO pending before the Federal Circuit, today there are 578.  The bulk of this increase is due to appeals from the post grant procedures created by the AIA.

According to a recent post on the AIPLA website the Federal Circuit has decided 128 appeals of IPRs and CBMRs.  7 (5%) of these were dismissed, 101 (79%) of these were complete affirmances.  In only 20 (21%) of these did the Federal Circuit reverse any aspect of the Board’s decision.

The PTAB, at least according to the Federal Circuit, seems to be getting it right.


The Board Cannot Adopt a Surprise Claim Construction

In SAS Institute, Inc. v. Complementsoft,LLC, [2015-1346, 2015-1347] (June 10, 2016), the Federal Circuit agree with the Board in an IPR involving U.S. Patent No. 7,110,936 on all of the challenged constructions resulting in finding of invalidity of all but one of the challenged claims.  The Federal Circuit also confirmed that the Board did not need to address in its final written decision claims for which IPR was not instituted.  Finally, the Federal Circuit vacated the Board’s determination that claim 4 is patentable and remanded so that the parties may address a new construction that the Board adopted in its final written decision after interpreting the claim differently before.

With respect to claim 4, which was sustained based upon a different construction of the phrase “graphical representations of data flows, the Federal Circuit remanded so that the parties could address the construction in the final written decision.  The Federal Circuit agreed with the construction of graphical representations of data flows” as “a graphical representation comprised of icons depicting data processing steps and arrows to depict the movement of data through source code.”  The Federal Circuit noted that the term was not used in the specification, and agreed with the Board’s use of the definition of the term “data flow diagrams,” which did appear in the specification.

The Federal Circuit rejected petitioner’s argument that because the construction was narrow, it could not be the broadest reasonable interpretation, saying:

While we have endorsed the Board’s use of the broadest reasonable interpretation standard in IPR proceedings, we also take care to not read “reasonable” out of the standard. This is to say that “[e]ven under the broadest reasonable interpretation, the Board’s construction cannot be divorced from the specification and the record evidence, and must be consistent with the one that those skilled in the art would reach.”

The Federal Circuit also relied upon the structure of the claims, noting that some of the claims speak broadly of flows, while others speak of data flows and program flows, was instructive as to the meaning of the claims (although this is not claim differentiation).

The Federal Circuit affirmed the Board’s invalidation of claims in the face of patent owner’s arguments that the claim constructions were incorrect.  The Federal Circuit specifically noting that because the specification and prosecution history did not conclusively resolve construction, it was appropriate for the Board to rely on dictionaries and expert testimony to aid its construction.

The most interesting aspect of the case may be the Federal Circuit’s treatment of the Board’s change in claim construction between the Institution Decision and the Final Written Decision, which gave the Federal Circuit “pause.”  The Federal Circuit noted that the Board’s new construction of “graphical representations of data flows” as “a graphical representation comprised of icons depicting data processing steps and arrows to depict the movement of data through source code,” varied varied significantly from its initial interpretation of the term as “a map of the path of data through the executing
source code.”  The Federal Circuit was not concered that the Board changed its construction, which the Federal Circuit said it was free to do, but that it Petitioner was not given an opportunity to address the new construction since the Patent Owner agreed with the original construction, and never suggested that the Board adopt the
construction that eventually materialized in the final written decision. Under these circumstances, the Federal Circuit said that it was 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 hypothetical constructions not asserted by their opponent.  The Federal Circuit vacated the decision, and remanded for further proceedings.

Federal Circuit Affirms Exclusion of IPR Reply that Raised New Grounds of Invalidity

In Intelligent Bio-Systems, Inc., v, Illumina Cambridge Ltd., [2015-1693] (May 9, 2016), the Federal Circuit affirmed the PTAB’s Final Written decision that the challenged claims of U.S. Patent No. 7,566,537, directed to a method of labeling nucleotides in DNA strand, was not shown to be obvious.

The presence or absence of a motivation to combine references in an obviousness determination and the presence or absence of a reasonable expectation of success are questions of fact reviewed for substantial evidence.  With respect the the expectation of success, the Federal Circuit found that the Board got it wrong, by failing to consider the appropriate scope of the claim.  The Federal Circuit noted that the Board seemed to believe that the “reasonable expectation of success” inquiry looked to whether one would reasonably expect the prior art references to operate as those references intended once combined. The Court said that is not the correct inquiry—one must have motivation to combine accompanied by a reasonable expectation of achieving what is claimed in the patent-at-issue.

While the Board conflated two different legal concepts—reasonable expectation of success and motivation to combine—it nevertheless made sufficient factual findings to support its judgment that the claims at issue are not invalid.  Petitioner had the burden to show  that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention.  However petitioner’s argument for obviousness was that it would have been obvious to combine the references to in order to improve the efficiency, reliability, and robustness of the sequencing by synthesis method taught in the primary reference, which required quantitative deblocking.  So even though quantitative deblocking was not a requirement of the claims, it was a requirement of Petitioner’ stated reason for the combination, and the “central” to a motivation to combine.  Not only did the Petition fail to provide a specific or credible explanation why an ordinary artisan would have combined the references, the patent owner provided substantial evidence to support a finding that a person of ordinary skill would not have had reason to combine the references.  These references support a conclusion that the claimed efficiency that allegedly motivated the combination would not be achieved and that a person of ordinary skill in this field would not have been motivated to combine the references.

Of more significance, is the Federal Circuit’s treatment of Petitioner’s improper reply brief.  The Federal Circuit noted that the Board’s determinations whether petitioner exceeded the scope of a proper reply in violation of 37 C.F.R. § 42.23(b) and/or improperly incorporated arguments by reference from another document in violation of 37 C.F.R. § 42.6(a)(3) are reviewed for an abuse of discretion.

The Federal Circuit said that it is of the utmost importance that petitioners in IPR proceedings adhere to the requirement that the initial petition identify “with particularity” the “evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3).  The Court said that all arguments for the relief requested in a motion must be made in the motion, and a reply may only respond to arguments raised in the
corresponding opposition or patent owner response.” 37 C.F.R. § 42.23(b). Once the Where this rule is violated, neither the Federal Circuit not the PTAB will parse the reply brief to determine which, if any, parts of that brief are responsive and which are

The Federal Circuit observed that unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute. The Federal Circuit agreed that new grounds were presented in Petitioner’s reply, and that the Board did not err in refusing the reply brief as improper under 37 C.F.R. § 42.23(b).  Having concluded the Reply was improper, the Federal Circuit did not reach the issues of whether the reply also impermissably incorporated arguments by reference.





Posted in IPR

BRI Should Not Depart from What the Claim Language and Specification so Clearly Mean

In Pride Mobility Products Corporation v, Permobil, Inc., [2015-1585, -1586] (April 5, 2016), the Federal Circuit reversed the PTAB’s construction and cancellation of claim 7, but affirmed cancellation of all the other claims of U.S. Patent Nos. 8,408,598 and 8,408,343 in IPR2013-00407 and IPR2013-00411.

At issue was the claim language “mounting plate [that] is substantially planar and is
oriented perpendicular to the drive wheel axis.”  The Federal Circuit said it was unreasonable to read that straightforward language as meaning anything other
than that the drive-wheel axis is perpendicular to the surface of the mounting plate that makes the plate substantially planar.  The Federal Circuit explained:

The claim language says two things about the plate: it must be substantially planar, and it must be oriented perpendicular to the drive-wheel axis. The “oriented” term allows the plate and axis not to be touching: it requires that their placement in space must be such that, if translated in space without rotation, they would be perpendicular. With the axis idealized as a line, perpendicularity in the ordinary geometric sense relevant here requires that the axis make a right angle with either an essentially one-dimensional feature (a line or curve) or an essentially two-dimensional feature (a plane or surface) of the plate: lines are not “perpendicular” to a three dimensional object in any other ordinary geometric sense.  And the claim tells us exactly what that feature of the three-dimensional plate is: it is the surface that makes the plate substantially planar. The claim identifies no other feature of the plate. The phrase “oriented perpendicular to the drive wheel axis” must be read to mean that the drive-wheel axis is perpendicular to the mounting plate’s substantially planar surface. We do not see how the claim language can mean anything else without obvious strain.

The Federal Circuit said that the Board’s sole basis for its claim construction does
not reasonably support a departure from what the claim language and specification so clearly mean. There was no evidence of the claim 7 element in the relied-on prior art. Because there is no other Board ruling or properly preserved argument addressed to this element, the Federal Circuit reversed the cancellation of claim 7.

Posted in IPR

We’ll Say it Again: Redundancy is not Reviewable

In HP Inc., v. MPHJ Technology Investments, LLC, [2015-1427] (April 5, 2016) the Federal Circuit affirmed the PTAB Final Written Decision in IPR2013-00309, agreeing that all but one challenged claim (claim 13) of U.S. Patent 6,771,381 was anticipated, and holding that it cannot review the Board’s decision not to review that claim as obvious, on redundancy grounds.

The Federal Circuit noted that under 35 U.S.C. § 314(d), the determination
by the Director whether to institute an inter partes review shall be final and nonappealable.  The Board rejected HP’s arguments, including that 314(d) only barred review of findings under 314, namely where there is a reasonable likelihood that petitioner would prevail;  that § 314(d) does not bar review of whether the Board has properly construed the scope of its authority; that the Board lacks authority to grant review on only a subset of properly presented grounds; that the Board did not fulfill its obligations under the APA; and finally that the Board did not adequately explain redundancy.

All is not lost for HP, however, as the Federal Circuit repeated its statement from its recent Shaw decision that estoppel does not apply to grounds that are not instituted, and thus “HP is not estopped from raising the obviousness of claim 13 in a subsequent court or Board proceeding, and a challenger cannot assert that the nonobviousness of claim 13 was resolved by the Board in this proceeding.”


Posted in IPR

PGR, IPR, and CBMPR Rules Amended Effective May 2, 2016


Rule 37 CFR 42.11 has been amended to provide for sanctions against parties and attorneys:



Pages Limits

The 60 page limit for a IPR Petiton has been replaced with a limit of 14,000 words (37 CFR 42.24(a)(i), and 60 page limit of the Patent Owner Preliminary Response, and Response are likewise replaced with a 14,000 word limit (37 CFR 42.24(b)(1), (2)).  The 80 page limit for a PGR or CBMPR Petition has been replaced with a limit of 18,700 words (37 CFR 42.24(a)(ii), (iii)), and the 80 page limit of the Patent Owner Preliminary Response, and Response are likewise replaced with a 18,700 word limit (37 CFR 42.24(b)(1), (2)).. These word counts do not include the table of contents, table of authorities, grounds for standing under § 42.104, § 42.204, or § 42.304, mandatory notices under § 42.8, a certificate of service or word count, or appendix of exhibits or claim listing.  Where a paper is limited by a word count, the paper must include a certification as to the word count

The page limit for motions to amend is bumped to 25 pages (37 CFR 42.24(a)(vi)), as is the Petitioner’s Opposition (37 CFR 42.24(b)(d), and the reply to an opposition to a motion to amend is bumped to 12 pages (37 CFR 42.24(c)(3)).


You now have to serve your demonstrative exhibits two days earlier — seven days before oral argument.  37 CFR 42.70(b).


The USPTO still insists on applying BRI to all claims, in all proceedings, except if the patent will expire within 18 months from the entry of the Notice of Filing Date Accorded to Petition, and the Patent Owner makes a timely motion.  37 CFR 42.100(b); 37 CFR 42.200(b); 37 CFR 42.300(b).

Bar Against Testimony in a Preliminary Response Removed

The bar against the submission of testimony to support a Preliminary Response has been removed.  37 CFR 42.107(c) and 37 CFR 42.207(c) have been removed.  While testimony can be submitted with a Preliminary Response, any genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.  37 CFR 42.108(c);  37 CFR 42.208(c)


Posted in IPR