CAFC Implies PTO Might Overlook Some 112 Issues

The Patent Trial & Appeal Board (PTAB) does not accept trial grounds under 35 U.S.C § 112 in Inter Partes Review.  This is because the IPR statutes only authorize trial grounds based on patents and printed publications.  The same has been true of patent reexamination for decades.

Last week, in Samsung Elec. Am., Inc. v. Prisua Eng’g Corp., the Federal Circuit considered whether the Board may cancel claims under 112 when such issues arise during trial.  The Court held that the PTAB may not cancel claims under 112, but instead, might, for certain types of claims, proceed to decide the prior art grounds.
Continue Reading

PTAB Precedent (Not Surprisingly) Embraces CAFC Precedent

As I pointed out last week, it is a heavy lift for the Patent Trial & Appeal Board (PTAB) to designate a precedential decision.  For this reason, nothing but the most straightforward of issues can be decided and designated “precedential.”

The PTAB issued a prime example of a seemingly straightforward precedential decision a few days ago in Ex parte McAward, Appeal 2015-006416 (PTAB Aug. 25, 2017), Section I.B. (here). This PTAB precedent makes clear that the USPTO assesses indefiniteness pursuant to the Federal Circuit’s guidance in In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).

While some have expressed shock at the PTAB pronouncing a different standard than that expressed in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), this is just a restatement of the Board’s status quo since the Packard decision. (It is not exactly shocking that the Board is following the guidance of its reviewing court).

The more interesting issue is whether the Court’s reasoning in Packard is equally applicable to AIA trial proceedings?
Continue Reading