IP Newsflash

The Patent Trial and Appeal Board has denied institution of a post-grant review proceeding because the petitioner failed to show the challenged patent was eligible for PGR. The PTAB ruled that the petitioner’s evidence, including expert testimony, did not show that the claims in the challenged patent lacked enablement by the disclosures of two PCT applications from which the challenged patent claimed priority. Because the challenged patent claimed the benefit of the two PCT applications, and those applications were filed before March 16, 2013, it was not eligible for PGR.

In a recent post grant review, the Patent Trial and Appeal Board considered the need to take discovery related to a petitioner’s invalidity challenges in deciding whether to exercise its discretion to deny institution.

The PTAB recently denied a motion to correct clerical mistakes under 37 C.F.R. § 42.104(c) because the corrections presented substantive new evidence that would have had a substantial impact on the proceedings and prejudiced the patent owner.

A district court has denied a patent owner’s motion to strike wholesale a defendant’s affirmative defense of invalidity. The key issue in the motion to strike was the application of the estoppel provision of 35 U.S.C. § 325(e)(2), which estops a post-grant review (PGR) petitioner from asserting in district court litigation that “a claim is invalid on any ground that the petitioner raised or reasonably could have raised during [the] post-grant review.”

In a report and recommendation issued Tuesday, August 15, 2017, a magistrate judge in the Eastern District of Texas stated that failure to provide a patent examiner with a copy of a relevant post-grant review (PGR) institution decision does not make a patent unenforceable for inequitable conduct.

On April 3, 2017, the Patent Trial and Appeal Board (PTAB) declined to institute post-grant review (PGR) of U.S. Patent No. 9,291,250 (the “’250 patent”), finding that it was not eligible for PGR. The petitioner argued that the ’250 patent, which relates to improved bicycle chainrings, was invalid as obvious under § 103 and because it failed to satisfy the written description and definiteness requirements under § 112.

On September 2, 2016, the U.S. Patent Trial and Appeal Board (PTAB) ruled that U.S. Patent No. 9,157,017 (the “’017 patent”) was eligible for post-grant review (PGR) even though, on its face, the  patent claims priority to a series of earlier applications that exceeded the cutoff for PGR eligibility. The PTAB held that the petitioner had demonstrated that the earlier filed applications did not provide written description support for, and did not enable, the challenged claims. As a result, the ’017 patent was not entitled to the earlier effective date and was held eligible for PGR.