Intellectual Property > IP Newsflash > PTAB Finds Patent Is Ineligible for Post Grant Review—Claim Submitted During Prosecution (but Canceled Before Issuance) Had Adequate Support in Parent Application
27 Apr '17

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.

PGR review is available only to patent applications, and any patents that issue thereon, that contain, or contained at any time, a claim to an invention having an effective filing date on or after March 16, 2013. See AIA § 3(n)(1). The application that led to the ’250 patent was filed after the eligibility date, but claimed priority to an application filed in 2011. To establish PGR eligibility, the petitioner argued that original pending claim 17 (which was presented in prosecution, but canceled before the ’250 patent issued) was not supported by the parent application and therefore could not claim priority back to 2011. Specifically, the petitioner argued that pending claim 17 lacked written support and was not enabled by the parent application.

Both parties submitted, and relied heavily on expert declarations in arguing whether the claims were enabled and adequately described. The PTAB, however, found that the petitioner’s contentions were largely based on the conclusory testimony of its expert. Because the petitioner’s expert provided no analysis regarding his underlying opinions, the PTAB gave his testimony no weight. Conversely, the PTAB found patent owner’s expert testimony to be well-reasoned as supported by sufficient evidence. Ultimately, the PTAB held that pending claim 17 had adequate support in the parent specification, and, therefore, the 2011 effective priority date rendered the ’250 patent ineligible for PGR.

Fox Factory, Inc. v. SRAM, LLC, PGR2016-00043, Paper No. 9 (PTAB Apr. 3, 2017) (Cherry, joined by Kim and Ippolito)