Denying Request to Modify Final Written Decision After Appeal to Federal Circuit CBM2013-00035


Takeaway: The Board may decline to modify a Final Written Decision that was reviewed by the Federal Circuit even where the Final Written Decision includes an error cancelling claims that should not have been included in the ground of unpatentability.

In its Order, the Board denied Patent Owner’s request that the Office not publish a certificate to cancel claims 8-12, 14, and 23 of the ‘516 patent.  Patent Owner alleged that the Final Written Decision entered on December 17, 2014 includes an error—“namely, claims 8-12, 14, and 23, which depend from claim 1 and not claim 2, should not have been included in the anticipation ground of unpatentability.” Continue reading

Institution Decisions Are Not Reviewable By Federal Circuit, But Whether Patent Qualifies As CBM Is – Sightsound v. Apple


Takeaway: The Federal Circuit does not have jurisdiction to review institution decisions under 35 U.S.C. § 324(e); however, it is not barred from reviewing whether a patent qualifies as a covered business method patent.

In its Opinion, the Federal Circuit held that the ’573 patent and ’440 patent qualify as covered business method (CBM) patents and affirmed the Board’s final written decision in CBM2013-00020.

In its petition to the Board, Apple asserted that claims 1, 2, 4, and 5 of the ’573 patent and claims 1, 64, and 95 of the ’440 patent were anticipated by CompuSonics. The Board instituted CBM and determined that both patents were CBM patents because they recite the electronic movement of money between financially distinct entities, and do not include features that would otherwise be excluded from CBM. Although Apple had only asserted that the patents were anticipated by CompuSonics, the Board exercised its discretion to institute review on obviousness grounds as well as anticipation grounds. SightSound argued that it had been deprived of a fair opportunity to respond to the obviousness grounds on which CBM had been instituted. The Board granted SightSound additional time for argument before rendering its final decision. In the final decision, the Board upheld institution of review on both anticipation and obviousness grounds. All of the claims of the ’573 patent and claim 1 of the ’440 patent were held to be anticipated by CompuSonics while claims 64 and 95 of the ’440 patent were deemed obvious in view thereof. Continue reading

Federal Circuit Reverses Board’s Claim Construction Based on Plain Meaning of the Claim Language


Takeaway: When claim language has a plain meaning that leaves no genuine uncertainties on interpretive questions, it is unlikely that the specification would support a different meaning; the specification plays a more limited role than in the common situation where claim terms are uncertain in meaning.

In its Opinion, the Federal Circuit rejected a claim construction on which the Board below relied for its decision and reversed the decision and remanded for further proceedings under the correct construction. The ‘704 patent entitled “Point-to-Point Internet Protocol” describes “certain protocols for establishing communication links through a network.” The Board had cancelled claims 1-7 and 32-42 of the ‘704 patent based on anticipation and obviousness. Continue reading

Federal Circuit Appeal in IPR2013-00080, 00081: Achates Reference Publishing v. Apple

PTAB Determination regarding Time-Bar under 315(b) is Not Appealable to the Federal Circuit


Takeaway: The Board’s determination regarding the time-bar under Section 315(b) is not analogous to the qualification of a patent for covered business method review and is not appealable to the Federal Circuit.

In its Opinion, the United States Court of Appeals for the Federal Circuit dismissed the appeals of Petitioner, Achates, appealing the Board’s Final Written Decisions in IPR2013-00080 and IPR2013-00081 finding claims 1-4 of the ’889 patent and claims 1-12 and 17-19 of the ’403 patent unpatentable. Achates appealed the Board’s decisions on the basis that the petitions were time-barred under 35 U.S.C. § 315(b), and the Board therefore acted outside of its statutory authority. Achates also appealed the Board’s denial of its motion for discovery.

Achates argued at the Board that Apple’s Petition is time-barred because Apple’s co-defendants in a patent infringement suit brought by Achates were actually real parties in interest with respect to the Petition or were in privity with Apple. The co-defendants had been served with the complaint for infringement more than one year before the Petition was filed and were therefore time-barred, but Apple was served with its complaint less than one year before the Petition’s filing. Achates relied upon a blank indemnification agreement between Apple and co-defendant QuickOffice as allegedly establishing privity or real party in interest, and moved for additional discovery into real party in interest on the same basis.

The Board found that the co-defendants were not real parties in interest or in privity with Apple and denied Achates’s motion for discovery. The Petitions were instituted, and the challenged claims subsequently found unpatentable. On appeal, Achates only challenged the Board’s denial of its motion for discovery and its conclusion that the Petitions were not time-barred.

The Court first reviewed the relevant statutory provisions regarding appealing decisions of the Board. According to 35 U.S.C. §§ 314(d) and 324(e), respectively, “[t]he determination by the Director whether to institute [IPR or CBMR] under th[ese] section[s] shall be final and nonappealable.” In contrast, pursuant to 35 U.S.C. §§ 319 (IPR) and 329 (CBMR), “part[ies] dissatisfied with the final written decision of the Patent Trial and Appeal Board under section[s] [318(a) or 328(a)] may appeal the decision pursuant to sections 141 through 144.” Moreover, the Federal Circuit noted that 35 U.S.C. § 141(c) states

A party to an inter partes review or a post-grant review who is dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 318(a) or 328(a) (as the case may be) may appeal the Board’s decision only to the United States Court of Appeals for the Federal Circuit.

The Court also discussed other Federal Circuit opinions holding that the Court lacked jurisdiction to hear appeals of institution decisions. In particular, the Court cited In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015), in which the Court held that the “reviewability prohibition” of Section 314(d) is not limited to interlocutory appeals and applies where the appeal of the institution decision is taken after the Board’s final written decision.

The Court also discussed Versata Dev. Grp., Inc. v. SAP America, Inc. (“Versata II”), 793 F.3d 1306 (Fed. Cir. 2015). In Versata II, the patent owner Versata appealed the Board’s determination that its patent qualified as a covered business method patent for CBM review after the Board’s final written decision. The Court held that while institution decisions are not appealable, the determination of whether a patent qualifies as a covered business method patent “was necessarily implicated in the final merits determination and was appropriate for review because of the fundamental limitation of the Board’s ‘ultimate invalidation authority’ in a CBMR to those patents that meet the CBM definition.”

Achates argued that, in the present case, a time-barred petition “goes to the Board’s ultimate authority to invalidate the patents, and therefore, under Versata II, is reviewable under § 319.” The Court disagreed, finding that Versata II was limited to its unique circumstances. In particular, the Court found that Section 315(b) “does not impact the Board’s authority to invalidate a patent claim—it only bars particular petitioners from challenging the claim.” In addition, the Court noted that the time limitation does not apply to joinder under subsection (c). Therefore, “the timeliness issue here could have been avoided if Apple’s petition had been filed a year earlier or if a petition identical to Apple’s were filed by another party,” in contrast to the situation in Versata II, where “no proper pleading [] could be filed to bring it within the [Board’s] § 18 authority.”

In addition, the Court distinguished the time-bar from Versata II because qualification as a covered business method patent was “the ‘defining characteristic’ of the Board’s ‘authority to invalidate’ a patent in the specialized CBMR process.” However, the time-bar is not such a defining characteristic, but is rather merely a rule for orderly progress of litigation.

Achates also argued that the Board’s reaffirmation of the time-bar determination in its final written decision made the determination appealable. The Court disagreed, finding that the overlap is not determinative (citing Versata II) and that the reconsideration of the time-bar can still be characterized as part of the institution decision.

Achates finally argued as a matter of statutory interpretation that the prohibition in Section 314(d) applied only to that section. However, the Board disagreed with Achates’s interpretation and found it to be contradicted by precedent. In particular, the “words ‘under this section’ in § 314 modify the word ‘institute’ and proscribe review of the institution determination for whatever reason.”

Thus, the Court held that Section 314(d) prohibits review of the Board’s determination regarding the time-bar of Section 315(b), even where the Board reconsiders its determination as part of the final written decision. The Court further held that “the Board’s institution decision does not violate a clear statutory mandate,” and therefore, the exception for ultra vires agency action does not apply.

Achates Reference Publishing, Inc. v. Apple Inc., No. 2014-1767, No. 2014-1788
Dated: September 30, 2015
Appeal From:
  IPR2013-00080; IPR2013-00081
Before: Judges Prost, Lourie, and Linn
Written by: Linn

Federal Circuit Affirms First CBM Final Written Decision


Takeaway: The Federal Circuit found that whether a patent is eligible for CBM review is reviewable on appeal as part of the review of the final written decision.

In its Opinion, the United States Court of Appeals for the Federal Circuit affirmed the Final Written Decision of the Board in CBM2012-00001, finding all of the challenged claims (17 and 26-29) of the ’350 Patent unpatentable under 35 U.S.C. § 101.  The ’315 Patent discloses a method and apparatus for pricing products in multi-level product organizational groups.

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Federal Circuit: Permissible to require patentee to show substitute claims are patentable over all prior art of record IPR2012-00026, IPR2013-00109


Takeaway: It is permissible for the Board to require a patentee to show that its proposed substitute claims are patentable over all prior art of record, even if certain prior art did not form the basis for institution of the proceeding with respect to the corresponding challenged claim.

In its Opinion, the United States Court of Appeals for the Federal Circuit affirmed-in-part, reversed-in-part, and vacated-in-part the Final Written Decisions of the Patent Trial and Appeal Board in the inter partes review of U.S. Patent No. 6,757,717 and remanded the case to the Board for further proceedings.

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Federal Circuit Decision Affirming the Board – In re Cuozzo Speed Technologies, LLC



Takeaway: Decisions by the Board to institute inter partes review are not appealable, and once an inter partes review proceeding has been instituted, the appropriate claim construction standard to be used for an unexpired patent is the broadest reasonable interpretation standard.

In its Decision, the U.S. Court of Appeals for the Federal Circuit held that decisions to institute inter partes review by the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board are not appealable.  The Federal Circuit also held that the “broadest reasonable interpretation” standard used by the Board in its claim construction analysis was correct.  Finally, the Federal Circuit affirmed the Board’s finding that the challenged claims of the ’074 patent related to a navigation system are invalid. Continue reading