The Patent Trial and Appeal Board granted a request for rehearing of a final written decision in which it had originally determined that the challenged were not unpatentable. On rehearing, the board found that petitioner’s reliance on applicant admitted prior art (AAPA) was proper because it was not the sole basis of any ground in the inter partes review proceeding.
In a recent decision, the Federal Circuit affirmed the PTAB’s policy of permitting claim amendments unrelated to the IPR proceedings when the amended claims also included amendments that respond to a ground of unpatentability.
In a precedential 52-page sua sponte decision, the United States Patent and Trademark Office (USPTO) Director Katherine Vidal addressed several issues of first impression relating to sanctionable misconduct in inter partes review proceedings. As set forth in more detail below, the Director ultimately determined that the petitioner had engaged in abuse of process. The Director banned the petitioner from any further participation in the proceeding, and allowed a joined petitioner to step into the role of lead petitioner. The Director then instructed the Patent Trial and Appeal Board to determine whether the IPR petition met the compelling-merits standard for institution, which is a higher standard than the reasonable likelihood standard typically required for IPR institution.
The Patent Trial and Appeal Board denied a petition to institute inter partes review, finding there was no reasonable likelihood that petitioners would prevail on their obviousness challenges. In rendering its decision, the PTAB rejected petitioners’ proposed claim construction as being contrary to plain meaning and being improperly grounded in irrelevant embodiments. The PTAB also declined to rely on statements concerning a device depicted in a video because those statements fell outside the ambit of prior art under 35 U.S.C. § 311(b). Finally, while the majority opinion declined to address the issue of whether the video itself was a printed publication, one judge found, in concurrence, that a publicly accessible video can qualify as a printed publication under the statute. More details regarding those rulings are provided below.
The Federal Circuit reversed an obviousness determination from the Patent Trial and Appeal Board (PTAB) for relying on an argument raised by the petitioner for the first time on remand. In so doing, the court held that the petitioner forfeited its new unpatentability theory because it was responsive to a claim construction put forth by the patent owner prior to the first appeal.
In an IPR institution decision issued shortly after the USPTO issued interim guidance on discretionary denials, the PTAB held that the petition presented “compelling evidence of unpatentability,” foreclosing a Fintiv discretionary denial.
A recent board decision denying inter partes review serves as a reminder that an expert opining on obviousness must at least meet the definition of an ordinarily skilled artisan.
In Thaler v. Vidal, the Federal Circuit held that the term “inventor” under the United States Patent Act must be a human being. The August 2022 ruling is likely to be the first of many decisions tasked with determining the role of AI within the larger universe of intellectual property.
