Top 10 Issues from the PTAB Currently on Appeal

December 10, 2014

Fish principals John Dragseth and Craig Countryman have over 60 Supreme Court and Federal Circuit appeals between them, and are watching the coming tsunami of PTAB appeals with great interest. To that end, they have tracked interesting cases working their way through the PTAB and explained them in this presentation while analyzing what effect those cases may have on future PTAB and litigation practice.

Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
John Draseth, Principal, Twin Cities
Craig Countryman, Principal, Southern California
Download Presentation Slides

Webinar Summary

  • Federal Circuit appeals from PTAB IPR and CBM decisions are starting to explode in quantity
    • Will strain judicial resources – most likely outcome is a high affirmance rate
    • Appellants need to find a compelling hook on which to hang the appeal and not simply re-hash the issues below
  • Top Issues on Appeal
    • Can Institution Decisions denying institution under 35 USC 312 and/or 315 be appealed?
      • Cir. says no; cert being sought to Supreme Court
    • Can Institution Decisions be challenged at all?
      • Cases have been argued, awaiting opinions
      • USPTO’s position is that only Constitution-violating decisions at institution can be challenged
    • What happens to grounds deemed redundant at institution – completely gone or revivable?
      • Seminal PTAB case is Liberty Mutual, CBM2012-00003
      • Awaiting guidance from Fed. Cir.
    • Can the PTAB properly apply the BRI (broadest reasonable interpretation) claim construction standard in AIA post grant proceedings (IPR, CBM, PGR)?
      • USPTO says yes – same reasons apply as in reexamination (patentee has opportunity to amend, no presumption of validity)
      • Patentees say no – no ability to amend as a practical matter (i.e., PTAB has not permitted a single instance of opposed claim amendment)
      • Awaiting guidance from Fed. Cir.
    • Will the Fed. Cir. reverse any PTAB denials of motions to amend?
      • PTAB has imposed requirements for amendments that some regard as nearly impossible to satisfy
      • To date, PTAB has not granted a single opposed motion to amend
      • Cir. unlikely to reverse absent egregious circumstances
    • CBM (Covered Business Method) Patent Review Issues
      • Can Fed. Cir. review PTAB’s determination that patent is a CBM patent?
        • USPTO says no
      • What is the proper scope of “financial product or service”?
        • USPTO takes a very broad view
      • What is the proper scope of a “technological invention”?
        • USPTO’s definition is circular and unhelpful
      • Is 35 USC 101 an available grounds for invalidating patent in CBM review?
        • USPTO says it must be, otherwise it would not be a defense in infringement litigation
      • What will Fed. Cir. do with appeals from litigation stays pending CBM review?
        • Cir. has uniformly favored stays
    • Will mandamus be available for anything in PTAB proceedings?
      • Probably not – mandamus is rare and available only if an issue cannot be addressed later on appeal
      • To date, only privilege issues have been available for mandamus
For audio-only (MP3 format), click here to launch in a new window, or right-click and choose “Save link/target as” to download to your computer.

< Main Webinar Page