In Ascend Performance Materials Operations LLC v. Samsung SDI Co., Ltd., Samsung SDI argued that the Patent Trial and Appeal Board (PTAB)’s final written decision was improper on several grounds and petitioned the Director to review the decision. The Director granted Samsung SDI’s request regarding the argument that the PTAB should have separately considered two claims that had an earlier priority date and antedated the prior art. The Director thus vacated the PTAB decision

The United States Patent and Trademark Office (USPTO) issued a memorandum regarding the use of applicant admitted prior art for purposes of an inter partes review. The USPTO explained that: "the basis of an IPR must be one or more prior art patents or printed publications. Statements in the specification of the patent being challenged are not prior art patents or printed publications." Thus, "admissions by the applicant in the specification of the challenged patent standing

The Patent Trial and Appeal Board designated this decision to institute an inter partes review as precedential. In this case, the Board declined to exercise discretion to deny institution under 35 U.S.C. 325(d) because there was "new, noncumulative prior art in asserted in the Petition." The Board also declined to exercise discretion to deny institution under 35 U.S.C. 314(a) because "[the] Patent Owner seems to acknowledge that the Board proceeding would not be directly dupl

The Patent Trial and Appeal Board on March 24, 2020 designated as precedential this decision denying institution of the inter partes review and explained that the Board utilizes a two-part framework in determining whether or not to exercise discretion under 35 U.S.C. 325(d). 35 U.S.C. 325(d) states "[i]n determining whether to institute or order a proceeding..., the Director may take into account whether, and reject the petition or request because, the same or substantially t

The Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board's obviousness determination based on its construction of the claimed expression "an amount effective to extend the time to disease progression in the human patient." With regard to the inconsistent positions taken by Genetech during prosecution and in the inter partes review, the Federal Circuit stated that: "Genentech interpreted its own claim language [during prosecution], based on its o

The Federal Circuit vacated the Patent Trial and Appeal Board's obviousness determination based on an erroneous construction of the claimed expression "treating a subject having onychomycosis." According to the CAFC, the Board's construction was inconsistent with the prosecution history (including statements made to overcome a rejection) and statements in the specification (including some relating to the object of the invention) which supported a narrower interpretation. Read

The Federal Circuit held that 35 U.S.C. § 315(c) does not authorize petitioners to the Patent Trial and Appeal Board (PTAB) to join themselves as a party to an earlier filed inter partes review. CAFC also held that joinder of petitions may not be used as a means to add new issues to an earlier instituted inter partes review. This is contrary to a PTAB Precedential Opinion Panel, Proppant Express Investments, from March 2019 which had indicated that parties can join their own

The Federal Circuit held that the Patent Trial and Appeal Board (PTAB) cannot institute inter partes review on a ground not advanced in Google's petition. The court also held that the claims can be found obvious by relying on general knowledge of a person of ordinary skill in the art (POSITA) to supply a limitation missing from the prior art. The court noted in this case that the PTAB did not rely merely on conclusory statements and unspecific expert testimony but rather rel

The Federal Circuit held that the Patent Trial and Appeal Board (PTAB) is not permitted to cancel claims on the grounds of indefiniteness in an inter partes review proceeding. However, even if certain claims are found to be indefinite, the PTAB may still rule on the patentability of the indefinite claims under 35 U.S.C. 102 and 103. Also, the term "digital processing unit" is not a means-plus-function limitation subject to analysis under 35 U.S.C. 112, paragraph 6. The cour

After Schrader has failed to demonstrate that a claim is obvious based on printed publications in an inter partes review, it is estopped under 35 U.S.C. § 315(e)(2) from later raising in district court an invalidity challenge relying on a physical product that presents the same "grounds" as the printed publications. Even if the "evidence" (i.e., the physical product) was not available during the IPR, the "grounds" (i.e., obviousness) raised by the physical product and the pr