USPTO declines petition for inter partes review – marking the first time since the proceeding has become available under AIA
Written by: Dorothy Whelan and Karl Renner
March 7, 2013
Synopsys, Inc. v. Mentor Graphics Corp., slip op. IPR2012-00041 (PTAB Feb. 2, 2013)
The PTAB’s decision in Synopsys, Inc. v. Mentor Graphics Corp. marks the first time that the PTAB has declined to adopt any of the grounds set forth in a petition for inter partes review. The decision underscores the importance of preparing a robust petition that prospectively addresses key claim construction issues, provides a thorough analysis of the grounds for patentability, and includes the petitioner’s best available evidence supporting its positions.
The Federal Circuit recently surprised many patent reexamination practitioners by holding in Belkin v. Kappos that the Board of Patent Appeals and Interferences (“the Board”) lacked jurisdiction to consider claim rejections proposed by a reexamination Requester that were not adopted by the USPTO because they were deemed not to raise a substantial new question (“SNQ”) of patentability.
Preliminary Responses in Inter Partes Review and Post-Grant Review The January 9, 2013, decision issued by the Patent Trials and Appeals Board (“PTAB”) in SAP America, Inc. v. Versata Development Group, Inc., slip op. CBM2012-00001, provides insight into the reasons that the PTAB will consider in a patent owner’s preliminary response for purposes of determining whether to institute inter partes review (“IPR”), post-grant review (“PGR”), or covered business method (“CBM”) proceedings.
Written by: John C. Phillips
January 18, 2013
SAP America, Inc. v. Versata Development Group, Inc., slip op. CBM2012-00001 (PTAB Jan. 9, 2013).
In the very first case brought under the U.S Patent and Trademark Office’s Covered Business Method (“CBM”) review procedure, the Patent Trial and Appeal Board (“PTAB”) provided invaluable guidance in its decision holding that a petition seeking CBM review of a patent warranted institution of a CBM review proceeding. Among other things, the PTAB signaled that it would interpret the requirements for instituting CBM review liberally, thereby enhancing the procedure’s potential value to defendants charged with infringing business method patents.