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.