Here are the highlights of 2016 for the PTAB, starting with a case decided on the last day of 2015 that found that the board actually does not need to consider timely submitted evidence that a party has a right to submit.
• Redline Detection, LLC v. Star Envirotech, Inc.—Timely filed supplemental information does not need to be considered by PTAB in IPR proceeding (federal circuit, Dec. 31, 2015).
• Ethicon Endo-Surgery, Inv. v. Covidien LP—The same PTAB panel can decide both IPR institution and merits (federal circuit, January 13).
• Tradestation Group v. Trading Technologies Int’l—The PTAB institutes a CBM proceeding on a graphical user interface, which is covered by multiple patents in Europe. This is despite the AIA legislative history clearly saying GUIs are not business method patents subject to CBM, and despite the fact that GUIs are not a business method and offer a technological solution. (PTAB, January 27).
• Synopsys, Inc. v. Mentor Graphics Corp.—The PTAB has discretion to institute an IPR and issue a written decision on a subset of challenged claims (federal circuit, February 10).
• Patent Office Amends PTAB Trial Practice Rules (April 1).
• The patent office defends the PTAB continually denying motions to amend in a Director’s Forum blog by Acting Chief APJ Nathan Kelley (May 9).
• USPTO announces David Ruschke (formerly of Medtronic) as the next chief administrative patent judge, effective May 23.
• Cuozzo Speed Technologies v. Lee—The PTAB can apply the broadest reasonable interpretation of patent claims in an IPR; decisions to institute an IPR are not appealable to federal courts. (Supreme Court, June 20).
• In re Magnum Oil Tools Int’l—The PTAB Improperly shifted the burden of proof on obviousness to the patent owner in IPR (federal circuit, July 25).
• Arendi S.A.R.L. v. Apple, Inc.—The federal circuit rules that common sense is not a substitute for reasoned analysis and evidentiary support (federal circuit, August 10).
• Veritas Technologies, LLC v. Veeam Software Corp.—PTAB is arbitrary, capricious in denying motion to amend in IPR (federal circuit, August 30).
• Mylan v. Yeda Research & Dev. Co.—PTAB invalidates three patents covering Teva’s Copaxone, opens door for Mylan’s generic version (PTAB, September 1).
• SAS Institute, Inc. v. Complementsoft, LLC—Federal circuit denies en banc rehearing, IPR proceedings can be instituted for less than all of the challenged claims (federal circuit, November 7).
• Click-to-Call Technologies, LP v. Oracle Corp.—In concurring opinions, two federal circuit judges invite en banc review of a holding that PTAB decisions to initiate IPRs are unreview – able (federal circuit, November 17).
• Unwired Planet v. Google—Federal circuit slams PTAB for using the wrong definition of CBM patent, which would make virtually every patent a covered business method (fed – eral circuit, November 21).
• In re Aqua Products—On December 9, the federal circuit sat en banc to hear arguments in In re Aqua Products, Inc. on the burden of proof applicable to motions to amend patent claims during an inter partes review.
