Tag: Patent Trial and Appeal Board

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IPR of pre-AIA patent not an unconstitutional taking
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Second update of PTAB Trial Practice Guide issued
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USPTO Announces Final Rule Changing Claim Construction Standard in Inter Partes Review, Post-Grant Review and Covered Business Method Patent Proceedings
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US PTAB Trial Practice Guide Updates

IPR of pre-AIA patent not an unconstitutional taking

In a notable, albeit not surprising, U.S. Federal Circuit decision today, the panel in Celgene Corp. v. Peter confirmed that an inter partes review finding of unpatentability of a pre-AIA patent is not an unconstitutional taking. (slip op. 2018-1171 (July 30, 2019)).

Noting an opening in the recent Supreme Court decision in Oil States, the Federal Circuit deemed the circumstances exceptional as their basis for review of an issue not before the PTAB in the underlying proceeding. The panel reasoned that the proceeding being “curative” in nature, and the approximately forty year period of time in which PTAB proceedings have existed subjecting granted patents to potential cancellations for that duration weighted against any unconstitutionality.

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Second update of PTAB Trial Practice Guide issued

The Patent Trial and Appeal Board (PTAB) issued a second update to its Trial Practice Guide, clarifying a number of logistical matters for practitioners and outlining the PTAB’s expectations and preferences for certain stages of the trial process.

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USPTO Announces Final Rule Changing Claim Construction Standard in Inter Partes Review, Post-Grant Review and Covered Business Method Patent Proceedings

The United States Patent and Trademark Office is publishing a final rule revising the claim construction standard used by the Patent Trial and Appeal Board (the “Board”) in inter partes review, post-grant review, and covered business method patent review proceedings.  The Board will no longer interpret claims under the broadest reasonable interpretation standard and will instead use the claim construction standard enunciated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny and followed by federal courts and the United States International Trade Commission (“ITC”).  The changes to the claim construction standard will only apply to proceedings in which a petition is filed on or after the effective date of the final rule.

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US PTAB Trial Practice Guide Updates

On Monday, August 13, 2018, the U.S. Patent Trial and Appeal Board (PTAB) issued a notice updating the Trial Practice Guide. The update provided revisions to Sections I.G. (Expert Testimony), II.A.3. (Word Count and Page Limits), II.D.2. (Considerations in Instituting a Review), II.I. (Reply to Patent Owner Response and Reply for a Motion to Amend; Sur-Replies), II.K. (Challenging Admissibility; Motions to Exclude; Motions to Strike), II.M. (Oral Hearing), and Appendix A (Sample Scheduling Order).  The update further contemplates additional revisions that will be released on a rolling basis when applicable.

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