IPRs & Other PTO Proceedings

Out of Time? Federal Circuit Reverses Course on Review of PTAB Time-Bar Determinations

En Banc Decision Remanding to Panel for Consideration of Merits of Petitioner’s Time-Bar Appeal, Fed. Cir. (January 8, 2018)

The Federal Circuit, sitting en banc, found that the decision of the Patent Trial and Appeal Board (“PTAB”) as to whether a petition for inter partes review (“IPR”) is barred as untimely may indeed be appealed.  Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1944 (Fed. Cir. Jan. 8, 2018) (en banc).  This overrules the panel in Achates Reference Publishing Inc. v. Apple Inc., 803 F. 3d 652 (Fed. Cir. 2015). READ MORE

PTAB “Clarifies” Procedures for Motions to Amend

On November 21, 2017, the PTAB released its “Guidance on Motions to Amend in view of Aqua Products.”  This guidance states that a Patent Owner’s motion to amend now only has to meet the requirements of 35 U.S.C. §316(d), and of 37 C.F.R. §42.121 (IPR) or 37 C.F.R. §42.221 (PGR/CBM), in order to be considered.  It further states that the burden of persuasion as to patentability of substitute claims is no longer on the Patent Owner.

The guidance provides that the Board will consider all of the evidence in the record, and that if that evidence is in equipoise, then the Board will grant the motion and enter the amended claims into the patent (i.e., the burden of persuasion now lies with the Petitioner).  It also says that Patent Owners have a duty under Rule 42.11 to disclose to the Board all information material to patentability of substitute claims. READ MORE

Reading The Tea Leaves: Concurrences Likely Coming In Oil States And SAS

Oil States and SAS Institute appear likely to continue the Supreme Court’s practice of resolving patent cases with relatively brief unanimous (or largely unanimous) opinions that are accompanied by concurrence opinions expressing specific points. The Supreme Court started its December session with these two patent cases, and has another nine cases to hear this week. Although it is always an uncertain business to predict outcomes from attending oral arguments, the view in the post-argument hallway was that the Supreme Court would maintain the status quo. READ MORE

IPRs at the Supreme Court: Argument Insights and What’s Next From Orrick’s Mark Davies

Join Law.com IP reporter Scott Graham and Orrick, Herrington & Sutcliffe partner Mark Davies on a conference call for day-after analysis of Supreme Court arguments in Oil States and SAS Institute, two cases that could reshape inter partes review proceedings or wipe them out altogether.  Scott and Mark will share their takeaways from inside the chamber, answer your questions, and discuss strategies for litigating patents until the clouds clear.

This conference call (9 AM PST/ 12 PM EST, Tuesday November 28) is free.  Please register here.

Mark Davies leads Orrick’s Patent Appeal Working Group and is D.C. head of the firm’s Supreme Court and Appellate practice.  He represents clients in appeals that include Patent Trial and Appeal Board decisions and is the author of Patent Appeals: The Elements of Effective Advocacy in the Federal Circuit (Matthew Bender 2018).

Reversed! Failure to Assert Robust Nonobviousness Arguments During IPR Led to Reversal By The Federal Circuit

Owens Corning v. Fast Felt Corporation, Fed. Cir. (October 11, 2017)

During inter partes review proceedings, the Patent Trial and Appeal Board (“PTAB”) is required to give claims their broadest reasonable construction in light of the specification.  See 37 C.F.R. § 42.100(b).  Thus, when the PTAB imports claim limitations based on the invention’s preferred embodiments, its decision upholding patent validity may be subject to reversal.  In situations where a broader construction is argued by the petitioner and adopted in the Institution Decision, and the patent owner does not provide suitable arguments for nonobviousness in light of that broader construction, the Federal Circuit may choose to reverse rather than remand. READ MORE

USPTO Fee Increases Impact IPR Filing Costs

Much like death and taxes, USPTO fee increases are a sure thing.  On November 14, 2017, the USPTO issued a new final rule raising many of the fees charged by the Office.  The Office also provided a chart that shows the changes from the current fees.

While many fees are increasing, the largest fee increase was to the IPR filing fees.  As set forth below, IPR fees are going up as much as 72%, and CBM/PGR fees as much as 33%.

(USPTO Final Rule: At-a-Glance, p. 17, available here)

The out-the-door fees for filing a basic IPR will go up from $23,000 to $30,500.

The out-the-door fees for filing a basic CBM/PGR rises from $30,000 to $38,000.

Excess claims fees in all of these proceedings are also going up by 50%.  For IPRs, the fees go from $200 to $300 per claim over 20 for the filing fee, and from $400 to $600 per claim over 15 for the institution fee.  For CBM/PGR, the fees go from $250 to $375 per claim over 20 for the filing fee, and from $550 to $825 per claim over 15 for the institution fee.

These new fees go into effect on January 16, 2018.

USPTO Issues New Regulation on Scope of Attorney-Client Privilege In PTAB Proceedings

On Tuesday, November 7, 2017, the USPTO published its final rule clarifying the situations in which the Office will recognize the existence of the attorney-client privilege in proceedings before the PTAB.  New section 37 C.F.R. 42.57 provides that all communications between a client and a USPTO patent practitioner (i.e. a registered attorney or agent), or between a client and a person authorized under foreign law to provide legal advice on patent matters, which communications are within the scope of the practitioner’s authority, will be afforded the attorney-client privilege. READ MORE

ITC Remedy Remains Even After PTO Finds Design Patent Claims to Be a “Croc”

Commission Order, Certain Foam Footwear, Inv. No. 337-TA-567 (Oct. 20, 2017).

In Certain Foam Footwear, the Commission denied Respondent Double Diamond’s request to modify, suspend, or rescind its general exclusion order and cease and desist order in a decade-old dispute concerning colorful plastic shoes. READ MORE

Consider Others’ Denied IPR Petitions Before Filing Your Own Follow-On Petition

Decision Denying Institution of Inter Partes Review, Samsung Electronics Co., Ltd. v. Elm 3DS Innovations, LLC, Case No. IPR2017-01305 (P.T.A.B. October 17, 2017).

Last month, we wrote about the Patent Trial and Appeal Board’s (“PTAB’s”) enumeration of seven non-exhaustive factors to be considered in determining whether to grant or deny a “follow-on” petition for inter partes review (“IPR”) after a previous petition attacking the same patent was denied.  In this case, the PTAB provided guidance where the first factor—“whether the same petitioner previously filed a petition directed to the same claims of the same patent”—is not explicitly satisfied, but the current petitioner is somehow connected to a previous petition. READ MORE

The Three Precedential Holdings of AQUA


On Wednesday, the en banc Federal Circuit decided Aqua Products, Inc. v. Matal, 2015-1177 (Oct. 4, 2017 Fed. Cir.), which addressed the allocation of burdens when the patent owner in an IPR moves to amend its patent to add substitute claims. The decision is 148 pages long, with three separate opinions and two separate dissenting opinions, no opinion or dissent fully joined by more than five judges, with only two judges signing a single opinion and, instead, most judges agreeing with parts of two or even three separate opinions.

In today’s blog post, we keep it very simple, though, given this blog’s mandate to focus on practical thoughts for the busy practitioner. In this post, we address this:  What in the Aqua decision is precedential, and what does that mean in practice? READ MORE