The Definiteness Standard for AIA Trials is Still Undecided
| June 7, 2018
Tinnus Enterprises LLC v. Telebrands Corp.
May 30, 2018
O’Malley, Wallach and Hughes. Opinion by O’Malley.
Summary:
This case is an appeal from a final decision from the PTAB in a Post-Grant Review (“PGR”) finding that the claims in U.S. Patent No. 9,051,066 are indefinite applying the In re Packard standard for definiteness. Tinnus Enterprises LLC (“Tinnus”) argued that the Nautilus standard for definiteness is the proper standard, but that the claims are definite under either standard. The CAFC declined to decide which definiteness standard is correct for a PGR at the USPTO. The CAFC instead held that the claims are definite under either standard, and thus reversed the PTAB’s decision of invalidity due to indefiniteness.
PTAB Decision to Institute a CBM is Final and Non-Appealable
| December 17, 2015
SightSound Technologies, LLC v. Apple Inc.
December 15, 2015
Precedential Opinion by Dyk, joined by Lourie and Hughes.
Summary
Apple filed petitions with the PTAB seeking CBM review of patents owned by SightSound under AIA. In the petitions, Apple argued that certain claims of the patents were invalid as anticipated under 35 U.S.C. § 102. The Board instituted CBM review finding that there was a reasonable likelihood that the asserted claims were anticipated or rendered obvious by prior art. However, while Apple’s petitions included alleged facts to support obviousness, the petitions did not specifically allege obviousness over the prior art. The Board initiated review on obviousness grounds anyway. During the CBM proceedings the Board gave SightSound extra time to respond to the obviousness grounds, but SightSound argued that it has been deprived due process to respond to the obviousness grounds on which the CBM review had been instituted. The PTAB entered a final decision based on the obviousness grounds from which SightSound appeals to the CAFC, but the CAFC rules that they are barred under 35 USC 314(d) and 35 USC 324(e) from reviewing the decision to initiate the CBM proceedings.
Tags: 35 USC 314(d) > 35 USC 324(e) > CBM > Covered Business Method > Due process > inter partes review > IPR > Post Grant Review
