Denying Institution for Lack of Identification of Corresponding Structure

Takeaway: The Board denied institution because the Board was unable to construe the claims because it was unable to determine what structure corresponded to the function of the means for limitation. In its Decision, the board declined to institute inter … Continue reading

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  • Report: Ebola Distracted Global R&D Funding For Neglected Diseases; Public Funding At Low

    A newly issued report provides the “first ever” picture of global investment in Ebola research and development. The report found that investment in Ebola might have come at the expense of other funding to develop drugs, vaccines and diagnostics for other neglected diseases. The report also found that public funding on research and development for neglected diseases was at its lowest in years.

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  • The First Patent Litigation Explosion

    Professor Christopher Beauchamp has released his interesting new article titled The First Patent Litigation Explosion.[1] The twenty-first century “patent litigation explosion” is not unprecedented. In fact, the nineteenth century saw an even bigger surge of patent cases. During that era, the most prolific patent enforcers brought hundreds or even thousands of suits, dwarfing the efforts […]

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  • Ariosa Diagnostics v. Verinata Health, Inc. (Fed. Cir. 2015)

    By Donald Zuhn — Last month, in Ariosa Diagnostics v. Verinata Health, Inc., the Federal Circuit vacated the decisions of the Patent Trial and Appeal Board concluding that Appellant Ariosa Diagnostics had not met its burden of proving that claims 1–30 of U.S. Patent No. 8,318,430 would have been obvious and remanded for for further consideration. The ‘430 patent, which is directed to methods of noninvasive prenatal testing for the presence of fetal chromosomal abnormalities, is owned by Appellee Verinata Health, Inc. The Federal Circuit described the claimed methods (claim 1 is some 58 lines long) as involving “obtaining blood…

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  • IPR amendments discussed in PROLITEC, INC v. Scentair

    The majority noted:

    In Proxyconn, we affirmed the Board’s denial of the
    patentee’s motion to amend because it failed to show that
    its proposed substitute claims were patentable over “prior
    art of record”—namely, a reference that the Board used
    as grounds for instituting review of claims other than
    those sought to be amended. 789 F.3d at 1303–08. We
    explained that the Board’s interpretation of its regulations
    in denying the proposed amendment was reasonable
    under the particular circumstances in Proxyconn and was
    consistent with the United States Patent and Trademark
    Office’s (“PTO’s”) position expressed in the Board’s informative
    decision in Idle Free Systems, Inc. v. Bergstrom,
    Inc., IPR2012–00027, 2013 WL 5947697 (PTAB June 11,
    2013). Proxyconn, 789 F.3d at 1307. However, we expressly
    declined to decide in Proxyconn whether the PTO’s
    additional guidance about the patentee’s burden in Idle
    Free also constituted a permissible interpretation of the
    PTO’s regulations. Id. at 1307 n.4. Following our Proxyconn
    decision, the Board issued a “representative decision”
    providing further guidance on the patentee’s burden
    on a motion to amend. See MasterImage 3D, Inc. v. RealD
    Inc., IPR2015-00040 (PTAB July 15, 2015). In particular,
    the Board stated, among other things, that “prior art of
    record” includes “any material art in the prosecution
    history of the patent.” Id. at 2.

    We conclude that the PTO’s approach is a reasonable
    one at least in a case, like this one, in which the Board’s
    denial of the motion to amend rested on a merits assessment
    of the entire record developed on the motion, not
    just on the initial motion itself. The Board’s position—
    that the patentee’s burden on a motion to amend includes
    the burden to show patentability over prior art from the
    patent’s original prosecution history—is not in conflict
    with any statute or regulation. Moreover, it is not unreasonable
    to require the patentee to meet this burden

    Judge Newman, in dissent,

    That statutory prescription applies whether the “proposition
    of unpatentability” is for amended or unamended
    claims. However, the PTAB disregards this statutory
    requirement by placing on the patentee the burden of
    proving patentability for a proposed amended claim. The
    PTAB so held in Idle Free Systems, Inc. v. Bergstrom, Inc.,
    109 U.S.P.Q.2d 1443, 1459 (PTAB Jan. 7, 2014) (“The
    burden is not on the petitioner to show unpatentability [of
    amended claims], but is on the patent owner to show
    patentable distinction over the prior art of record and also
    prior art known to the patent owner.”) (citing Idle Free,
    Decision on Motion to Amend Claims, § 42.121 at 7,
    IPR2012-00027 (PTAB June 11, 2013), Paper No. 26)
    (emphasis omitted)).

    The America Invents Act does not authorize or suggest
    such a shift in the statutory burden. The PTO, in its
    Intervenor’s brief, invokes the practice of district court
    litigation and argues that if the patentee files a motion, it
    bears the burden of establishing entitlement to grant of
    the motion. However, this generalization is inapplicable
    when there are explicit statutory burdens that set a
    different standard.
    The Act requires the PTAB to analyze the patentability
    of “any new claim added under section 316(d),” 35
    U.S.C. § 318(a), again reflecting the statutory directive
    that the new claim should be added, provided that it
    qualifies under the statute. The PTAB then determines
    patentability of the added claim in accordance with the
    statutory burdens. The statute places the burden of
    proving invalidity (unpatentability) on the petitioner. As
    explained by Senator Kyl, “inter partes reexamination is
    converted into an adjudicative proceeding in which the
    petitioner, rather than the Office, bears the burden of
    showing unpatentability.” 137 Cong. Rec. S1360, S1375
    (daily ed. Mar. 8, 2011). The Act makes no distinction
    between original and amended claims in inter partes
    My colleagues on this panel depart from the statute in
    removing from the petitioner the burden of showing
    unpatentability of amended claims.


    However, the PTAB reviewed the claims
    under the broadest reasonable construction standard, and
    this court reviewed the PTAB decision under the highly
    deferential substantial evidence standard. With deferential
    review an incorrect PTAB decision is less likely to be
    corrected on appeal, contrary to the purpose of the America
    Invents Act to achieve correct determinations of patentability.

    The substantial evidence standard is inappropriate in
    this context. There is no requirement that every administrative
    decision on every subject must receive deferential
    review. The standard of review should be attuned to the
    circumstances. When the America Invents Act assigned
    to the PTAB the preponderance of the evidence standard
    for these post-grant procedures, it became inappropriate
    for the PTAB to give deference to the PTO’s prior ruling
    granting the patent.


    **UPDATE. Comment at PatentlyO

    RE PM text — Thus claim amendments are usually NOT proposed in IPRs, as demonstrated by the paucity of prior Fed. Cir. appeals from IPRs on that issue before now among the numerous other IPR appeals.
    Patent owners do not even usually have an incentive to propose amendments even to cure their claim ambiguities, since claim ambiguity can get the IPR proceeding terminated without any adverse 102 or 103 decision, to the advantage of the patent owner. —

    Judge Newman in Cuozzo: There is no right of amendment in these new post-grant proceedings, and motions to amend are rarely granted.1
    Note 1: See Andrew Williams, PTAB Update – The Board Grants Its Second Motion to Amend (At Least in Part), PATENT DOCS (Jan. 8, 2015), link to 2015/01/ptab-update-the-board-grants-its-second-motionto-amend-at-least-in-part.html; see also Jennifer E. Hoekel, PTAB Grants First Opposed Motion to Amend Claims-Patent Trial and Appeal Board, THE NATIONAL LAW REVIEW (January 14, 2015), link to

    Is Judge Newman right, or wrong? Are patentees moving to amend? How frequently? What percentage of such motions are granted?

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  • Google’s Patent Purchase Program: What Did We Learn?

    Recently, this blog discussed Google’s Patent Purchase Program (Program), here.  The Program was designed to help Google get in front of the patent troll problem by purchasing patents that could be acquired by patent trolls and subsequently used to “hold up” practicing entities.  Tam Harbert has published an article in the IEEE Spectrum titled, “Google Tries to Keep Patents Out of the Hands of Trolls.”  The article reports on the results of the Program.  Notably, the article states: “Internet Giant Buys 28% of the Patents Offered During Its Patent Purchase Experiment.”  The median price for a patent was $150,000.  The lowest price Google paid was $3,000 and the highest price was $250,000.  Interestingly, the highest submission offer was $3.5 billion and 47 percent of the submission offers were below $100,000.  The article notes that even though the Program was only available for three weeks “a few thousand” patents were submitted for consideration.  Around 28% of a few thousand patents is a significant number of patents.  It is unclear how many patents were purchased.  The article also notes that the value of the patents in this field are likely significantly less because of the U.S. Supreme Court’s decision in Alice.

    As the article hints, a lesson from the experiment may be that we (of course) need a real marketplace for patents (with “less friction”).  Even with the short notice for the program as well as a narrow time frame to submit, there were many willing participants.  Moreover, a substantial number of the submissions were from individual inventors—about 25%.  Interestingly, this may indicate that individual inventors do not have many opportunities to monetize their patents and valuable patents may be “languishing” on the shelf, so to speak.  And worse yet, technology covered by those patents may not be commercialized.  This brings me to a second point.  What does Google plan to do with this patented technology?  The article also hints that Google acquired patents relevant to its business.  Will it actually utilize the technology covered by the patents?  Is it already using technology covered by the patents?  I suppose it could just sit on the technology and not use it.  Will it assert the patents against other operating companies? 

    Notably, Google continues to accept submissions to consider patents—although not under the terms of the Program.  Will Google reopen the Program?

    Google also has taught us that there are a lot of potentially valuable patents out there that could be successfully asserted against operating companies.  Good to know?  It doesn’t seem like Google is widely publishing the results of the Program.  

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  • Pending Supreme Court Patent Cases

    by Dennis Crouch 1.   Petition Granted: Halo Electronics, Inc. v. Pulse Electronics, Inc., et al., No. 14-1513 (enhanced damages) (linked to Stryker) Stryker Corporation, et al. v. Zimmer, Inc., et al., No. 14-1520 (enhanced damages) (linked to Halo) 2.   Petition for Writ of Certiorari Pending: Life Technologies Corporation, et al. v. Promega Corporation, No. 14-1538 […]

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  • Conference & CLE Calendar

    December 10, 2015 – “Optimal Use of Provisional Patent Applications: Best Practices and Pitfalls to Avoid” (Technology Transfer Tactics) – 1:00 to 2:00 pm (Eastern) December 10, 2015 – “Patent Litigation and Motions to Stay in Light of IPRs, PRGs and C…

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  • The Anniversary The World Trade Organization Would Rather Forget

    The World Trade Organization (WTO)’s 20th anniversary celebrations are about to reach a climax with the 15–18 December Nairobi Ministerial Conference — the first to be held in Africa — following a celebratory Public Forum in Geneva in October. Just over a week before Nairobi, another anniversary is slipping by almost unnoticed. Today, December 6, is the 10th anniversary of a decision that the Director-General at the time, Pascal Lamy, hailed as confirmation “once again that members are determined to ensure the WTO’s trading system contributes to humanitarian and development goals.”

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