Greenblum & Bernstein, P.L.C.



keePing TABs  No. 22


February 2016   

In This Issue

·    Taking Stock of IPR, CBM and PGR Petitions

·    Latest Versions of G&B Spreadsheets

·    Recent Developments In The Law

Contact Us:

Jill M. Browning


Bruce Stoner,
Chairman, Reexamination and Post-Grant Practice Group

703-716-1191 (phone)

Taking Stock of IPR, CBM and PGR Petitions

Through December 31, 2015, there have been 3,953 petitions for inter partes review (“IPR petitions”) filed, as well as 408 petitions directed to covered business methods (“CBM petitions”) and 15 Post-Grant Review (PGR) petitions.  Interestingly, at least seven of the 15 PGRs challenge, or have challenged, a patent with a pre-America Invents Act (AIA) priority claim—i.e., seven patents challenged by PGR claim priority to a patent application with a filing date before March 16, 2013.

The total number of petitions filed by month can be shown by this graphic (source, USPTO Website):

Patents from the electrical/computer arts continue to constitute the largest percentage, although it has declined from about 64% to about 51%, with bio/pharma petitions growing from about 9% to about 16%.

Recent Developments In The Law

U.S. Supreme Court To Review PTAB Claim Construction Standard

Cuozzo Speed v. Lee.  The U.S. Supreme Court will, for the first time, address an America Invents Act (AIA) proceeding.  The CAFC affirmed the PTAB’s use of the  “broadest reasonable interpretation” (BRI) standard for IPR proceedings.  This standard, which has been consistently employed by the USPTO for years, was promulgated by rule, and is not explicitly found in a statute.  The CAFC also held that it lacked authority, in view of 35 U.S.C. §314(d), to review the PTAB’s decision to institute an IPR.  We will continue to provide updates on developments in this case.

PTAB Institutes First Post-Grant Review

Inguran v. Premium Genetics, PGR2015-00017. USP 8,933,395 owned by Premium Genetics, Ltd. (PG), has a filing date of Jan. 31, 2014, and a long priority chain of continuation and provisional applications reaching back to July 31, 2002 (pre-America Invents Act (AIA)). The ‘395 Patent has 14 claims, with independent claims 1 and 2.  Claim 2 was filed by way of preliminary amendment on the ‘395 Patent filing date—Jan. 31, 2014 (post-AIA).

Petitioner Inguran filed the petition for a Post-Grant Review (PGR) within nine months of the ‘395 Patent grant date and Patentee PG filed a Preliminary Response. In its Dec. 22, 2015 Decision on Institution, the PTAB agreed with Inguran that the ‘395 Patent is available for PGR.  PTAB ruled that even though claim 1 was fully supported by the pre-AIA priority application (giving claim 1 a pre-AIA effective filing date), claim 2 was not sufficiently disclosed in the pre-AIA priority application. Central to the PTAB’s reasoning was the analysis of “constriction and flattening of cells” language in claim 2. PG contended that the skilled artisan would understand the meaning of this claim language and pointed to a third-party prior art patent as support. PTAB found PG’s argument unpersuasive, stating that “a prior application itself must describe an invention.”  PTAB determined that claim 2 was not supported by the pre-AIA priority application. With an effective filing date of Jan. 31, 2014, PTAB found that claim 2 fulfills the AIA provision of an application containing “at any time” a claim with an effective filing date on/after March 16, 2013. PTAB therefore ruled that all claims (including claim 1) of the ‘395 Patent are subject to PGR.

IPR decision remanded for USPTO to use correct claim construction

Straight Path IP Group, Inc. v. Sipnet EU S.R.O., (Fed. Cir. November 25, 2015).

The CAFC overturned a USPTO inter partes review decision that cancelled Straight Path’s claims. The claims were directed to a system, apparatus, and method for facilitating real time communication between two users over the internet. At issue was the meaning of the claim limitation “is connected to a computer network.” Straight Path argued that the language indicated a present-tense status. The USPTO adopted Sipnet’s construction that the limitation simply required being active and on-line at registration with the server “as the broadest reasonable construction based on the specification.”

The CAFC concluded that the Board's claim construction was erroneous even under the broadest-reasonable-interpretation standard. It was not a reasonable interpretation of the claim language, considering the plain meaning of the claim language.  The claim language, “is connected to the computer network" could only reasonably be understood to mean "is connected to the computer network at the time that the query is transmitted to the server.”

The IPR System is Constitutional

MCM Portfolio LLC v. Hewlett-Packard Co., (Fed. Cir. December 2, 2015).  MCM Portfolio LLC owns U.S. Patent '549, which claims methods and systems for coupling a computer system with a flash memory storage system. Hewlett-Packard Co. filed a petition with the Patent and Trademark Office requesting inter partes review of claims 7, 11, 19, and 21 of the '549 patent. The PTAB determined that HP's petition demonstrated a reasonable likelihood that the challenged claims of the '549 patent were invalid as obvious and instituted an inter partes review. Thereafter, the Board issued a final decision holding that the challenged claims would have been obvious. MCM appeals.

The Federal Circuit has rejected MCM’s foundational challenges against the Inter Partes Review (IPR) system implemented as a result of the America Invents Act of 2011 (AIA). The court held that the IPR system does not violate Article III of the U.S. Constitution nor does it violate the Seventh Amendment of the U.S. Constitution. On the merits, the court then affirmed the PTAB’s decision cancelling MCM’s challenged claims as obvious. The court writes: “The teachings of the Supreme Court in Thomas, Schor and Stern compel the conclusion that assigning review of patent validity to the PTO is consistent with Article III . . . .  Furthermore, we are bound by prior Federal Circuit precedent . . . .  We see no basis to distinguish the reexamination proceeding in Patlex from inter partes review . . . .  Because patent rights are public rights, and their validity susceptible to review by an administrative agency, the Seventh Amendment poses no barrier to agency adjudication without a jury.”

Ethicon Endo-Surgery v. Covidien, (Fed. Cir. January 13, 2016):

Ethicon owns U.S. Patent No. 8,317,070. Covidien filed a petition for inter partes review of claims 1-14 of the '070 patent.  The PTAB instituted trial and, on the merits, found all challenged claims invalid as obvious over the prior art. Ethicon appealed to the Federal circuit, asserting that the Board's final decision is invalid because the same Board panel made both the decision to institute trial and the final decision concluding that the claims were unpatentable. Ethicon also argued that the Board’s conclusion was in error.

The CAFC held that 35 U.S.C. § 314(d) does not preclude the same panel from both instituting review and making the final decision.  The CAFC also affirmed the finding that the '070 patent claims were unpatentable.


The GREENBLUM & BERNSTEIN keePing TABs NEWSLETTER is issued by GREENBLUM & BERNSTEIN, P.L.C., an intellectual property firm, to provide timely news in the field of intellectual property.  The NEWSLETTER provides monthly updates on recent issues of general interest in this field.  The views and/or opinions expressed herein do not necessarily reflect those of GREENBLUM & BERNSTEIN, P.LC.  Information regarding the contents of the Newsletter can be obtained by contacting Bruce Stoner at GREENBLUM & BERNSTEIN, P.L.C., 1950 Roland Clarke Place, Reston, VA 20191.  © 2015 GREENBLUM & BERNSTEIN, P.L.C.