There’s been an issue bubbling under the surface of PTAB AIA proceedings: redundant grounds.
The issue boiled to prominence last week during oral argument at the Federal Circuit in Shaw Industries Group v. Automated Creel Systems, No. 2015-1116, which was an appeal of IPR2013-00132. Shaw, the Petitioner, had several of its grounds directed to certain claims denied in the interests of “efficiency” and then lost on the instituted grounds for those claims in the final decision.… More
When I was an Adminsitrative Patent Judge, I expected to go into an IPR trial hearing with a pretty good idea of who was going to win. I was surpised to find that rarely to be the case. I was far more open to persuasion at that point than I had expected to be.
Some commentators have likened PTAB trial hearings to oral argument at the Federal Circuit. … More
The Board has once again applied the Mayo/Alice test for patent eligibility, this time in the final written decision for United States Postal Service v. Return Mail Inc., CBM2014-00116, finding all six challenged claims unpatentable under 35 U.S.C. § 101. The patent bar as a whole, and this blog in particular, have noted how deadly § 101 has become post-Alice.… More
A Petitioner faces great peril if it gets an IPR instituted but then doesn’t prevail in the final written decision. That is, the Petitioner puts in enough to get a trial but not enough to win it. A Petitioner thus caught finds itself bound even more inextricably to the patent it sought to free itself from.
How can this happen? After all, if there was enough in the Petition to persuade the PTAB that a trial is justified,… More
The Supreme Court’s Alice v CLS Bank decision (2013) restricted categories of patentable subject matter in both the courts and in the Patent Office, including at the Patent Trial and Appeal Board. A look at the statistics at the PTAB shows just how effective a § 101 challenge can be.
The Supreme Court in Alice held that patents claiming “abstract ideas” are invalid and not eligible subject matter. … More