Articles Posted in PTAB

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In a recent inter partes review institution decision, the Patent Trial and Appeal Board (PTAB) addressed and rejected a procedural challenge regarding word count compliance, providing guidance on formatting requirements and waiver of procedural objections.

In IPR2025-00112, Patent Owner Miracor Medical SA accused Petitioner Abbott Laboratories of circumventing the 14,000-word limit for IPR petitions through improper formatting. Patent Owner argued that Abbott’s petition “regularly omits a space when citing to exhibits (e.g., ‘Ex.1001’ vs. ‘Ex. 1001’), the expert’s declaration (e.g., ‘¶¶16–19’ vs. ‘¶¶ 16–19’), and statutes (e.g., ‘§103’ vs. ‘§ 103’).” Patent Owner claimed these formatting choices occurred so frequently that “at least 966 words have been improperly undercounted,” resulting in “an advantage to Petitioner and undue prejudice to Patent Owner.” The patent owner sought denial of the entire petition based on this alleged violation.

PTAB’s Established Standards

The Board referenced the Patent Trial and Appeal Board Consolidated Trial Practice Guide, which states that “deleting spacing between words, or using excessive acronyms or abbreviations for word phrases, in order to circumvent the rules on word count, may lead to a party’s brief not being considered.” The guidance specifically warns against manipulative formatting designed to evade word count limitations, citing the Federal Circuit’s decision in Pi-Net Int’l, Inc. v. JPMorgan Chase & Co., 600 F. App’x 774 (Fed. Cir. 2015).

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The Patent Trial and Appeal Board (PTAB) has denied a petition for inter partes review of Phenix Longhorn LLC’s patent, ruling that the petitioner failed to properly address means-plus-function claim limitations as required by USPTO rules.

Background

In IPR2025-00044, Petitioner challenged claims 1-3, 5, and 6 of U.S. Patent No. 7,557,788 B1, titled “Gamma Reference Voltage Generator.” The patent relates to a programmable buffer integrated circuit for generating gamma correction reference voltages used in liquid crystal displays (LCDs).

Key Issue: Means-Plus-Function Claim Construction

The central issue in the case involved proper construction of “means for executing” limitations found in the challenged claims. Under 37 C.F.R. § 42.104(b)(3), petitions must identify the specific portions of the specification that describe the structure corresponding to means-plus-function claim elements. The PTAB found that Petitioner failed to satisfy the mandatory claim construction requirements in multiple ways:

First, the Petitioner took contradictory positions on whether certain claim limitations were means-plus-function terms. As the Board noted: “Petitioner’s argument that claim 3’s ‘means for executing . . . ‘ is means-plus-function language (Pet. 12–14) conflicts and is at odds with Petitioner’s argument that claims 1 and 5’s ‘means for executing’ (discussed above) is not means-plus-function language (Pet. Reply 5).”

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The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) rejected Micron Technology’s arguments that national security and foreign policy concerns should prevent a Chinese memory manufacturer from challenging an American patent, highlighting current limitations on the Board’s discretionary authority.

Central Dispute Over Chinese Government Involvement

In a June 10, 2025 decision, the PTAB granted Yangtze Memory Technologies Co., Ltd. (YMTC) petition challenging Micron’s U.S. Patent No. 8,945,996 B2, despite Micron’s extensive arguments about YMTC’s ties to the Chinese government.  Micron argued that YMTC is fundamentally a Chinese state-owned entity, describing it as “China’s State-Owned NAND Memory Company” and alleging that “the Chinese government is in privity with YMTC and is using YMTC as a proxy to challenge U.S. patents that impede its significant investments in YMTC and strategic objectives in the semiconductor industry.” The patent owner warned that “instituting review would set a dangerous precedent, enabling any foreign government to challenge U.S. patents through proxies and thereby threaten the economic and strategic interests of the United States.”

Board’s Hands Tied on Foreign Policy Considerations

Despite acknowledging these concerns, the PTAB ruled it was powerless to consider such arguments under current USPTO guidance. The Board stated definitively: “To date, the Director has not provided any guidance as to when a panel should deny institution based on foreign policy or national security implications, applicable to the facts presented here.” More significantly, the Board noted that current USPTO policy explicitly prohibits such considerations, explaining that “the USPTO has expressly determined that Board panels, in considering discretionary denial sought in a Preliminary Response filed on or before March 26, 2025, may not consider such factors.” The Board cited official USPTO guidance stating that “The panel will not address any new factors outlined in the Process Memorandum,” effectively ruling that foreign policy and national security implications are off-limits for PTAB panels when deciding whether to institute patent reviews.

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The U.S. Court of Appeals for the Federal Circuit delivered a noteworthy ruling on Jan. 27, 2025, definitively establishing that the Patent Trial and Appeal Board (PTAB) retains jurisdiction to conduct inter partes review (IPR) proceedings even after patents have expired. The decision in Apple Inc. v. Gesture Technology Partners, LLC, 127 F.4th 364 (Fed. Cir. 2025) provides important clarity for future post-expiration challenges.

The Jurisdictional Challenge

Gesture Technology Partners, the patent owner, mounted an aggressive jurisdictional challenge arguing that the PTAB lacked authority to review its expired patent. The company’s U.S. Patent No. 8,878,949, covering camera-based gesture recognition technology, had expired in May 2020—more than a year before Apple filed its IPR petition in June 2021.

Gesture’s argument hinged on an interpretation of the Supreme Court’s 2018 decision in Oil States Energy Services v. Greene’s Energy Group. The company contended that because Oil States characterized patents as “public franchises,” and because expired patents no longer grant the right to exclude others, the “public franchise ceases to exist” upon expiration. With only limited rights remaining—primarily the ability to collect past damages—Gesture argued that jurisdiction shifted exclusively to Article III federal courts.

The Federal Circuit’s Response

Writing for a three-judge panel, Circuit Judge Timothy B. Dyk systematically dismantled Gesture’s jurisdictional argument, finding it “incompatible with the Court’s logic in Oil States.” The court emphasized that the Supreme Court’s reasoning in Oil States was specifically grounded in the concept that IPR proceedings represent “a second look at an earlier administrative grant of a patent.” This fundamental characterization, the Federal Circuit explained, focuses on the review of the original grant decision rather than the current scope of patent rights. “The review of an earlier grant of a patent thus inherently involves the adjudication of a public right, and it is irrelevant whether the patent has expired,” the court stated, “since the patent itself continues to confer a limited set of rights to the patentee.”

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In a significant decision that resolves ongoing disputes among Patent Trial and Appeal Board (PTAB) panels, Acting USPTO Director Coke Morgan Stewart has granted Director Review and established clearer standards for when inter partes review (IPR) petitions should be denied under 35 U.S.C. § 325(d) when prior art was previously considered during patent prosecution.

Case Background

The decision in Ecto World, LLC and SV3, LLC v. RAI Strategic Holdings, Inc. (IPR2024-01280) involved a petition challenging Patent 11,925,202 B2, where all asserted prior art references had been submitted during the original patent prosecution in an Information Disclosure Statement (IDS) containing more than 1,000 references, which is  “over 40 times the size of a typical IDS,” according to the Director’s analysis. The PTAB had initially denied institution under § 325(d), which allows the Director to deny review when “the same or substantially the same prior art or arguments previously were presented to the Office.”

Key Ruling: Petitioners Must Explain Examiner Error

The Director’s decision resolves a critical split among PTAB panels regarding whether petitioners must explicitly demonstrate how the patent examiner erred when relying on previously-considered prior art. The ruling establishes that petitioners must provide an analysis even when the asserted prior art appears on an IDS but was not applied by the examiner.  “A petitioner must explain, with reference to Becton Dickinson factors (c), (e), and (f), how the Examiner erred in overlooking the prior art,” the Director stated, clarifying the second prong of the Advanced Bionics framework. The decision specifically addresses situations where examiners may have overlooked relevant teachings: “A petitioner also may point to the fact that even though the asserted prior art is listed on an IDS, the Examiner did not issue any prior art rejections during examination, so the Examiner materially erred by overlooking certain teachings in the prior art on the IDS.”

Burden Shifting Rejected

The Director firmly rejected attempts by petitioners to shift their burden to the PTAB, noting that “Petitioner’s suggestion that the Board should have scoured the Petition to cobble together an argument under the second part of Advanced Bionics improperly shifts Petitioner’s burden to demonstrate material error onto the Board.”  This ruling emphasizes that “Judges are not like pigs, hunting for truffles buried [in the record].”

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In a significant ruling that could impact patent dispute procedures, Acting United States Patent and Trademark Office (USPTO) Director Coke Morgan Stewart has vacated a Final Written Decision by the Patent Trial and Appeal Board (PTAB) and remanded multiple cases back for further proceedings. The April 24 order addresses procedural issues in a dispute between semiconductor manufacturers and a patent owner that highlight important aspects of inter partes review (IPR) proceedings.

Case Background

The dispute involves petitions filed by Semiconductor Components Industries (doing business as onsemi) and Texas Instruments against patents held by Greenthread LLC. At issue were semiconductor patents (11,121,222 B2 and 10,510,842 B2) being challenged through IPR proceedings IPR2023-01242, IPR2023-01243, and IPR2023-01244.

Director Identifies Key Procedural Errors

Director Stewart’s order identifies several procedural errors that necessitated intervention:

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In a significant reversal for Petitioner Motorola Solutions, the Acting Director of the United States Patent and Trademark Office (USPTO) has granted Stellar LLC’s request for Director Review, vacated the Patent Trial and Appeal Board’s (PTAB) earlier decision instituting inter partes review of four patents, and denied institution.

The March 28, 2025 decision, affecting Stellar, LLC’s U.S. Patent Nos. 7,593,034, 9,485,471, 8,692,882, and 9,912,914, hinged on the application of the Fintiv factors, which guide PTAB discretion in instituting inter partes review when parallel district court proceedings exist. Acting Under Secretary Coke Morgan Stewart found that “the Board’s analysis of factors 3 and 4, and overall weighing of the Fintiv factors was erroneous” and that the Board “did not give enough weight to the investment in the parallel proceeding and gave too much weight to Petitioner’s Sotera stipulation.”

Substantial Investment in Parallel Proceeding

The Director emphasized that by the time Stellar filed its Preliminary Response, the parties had already “served extensive infringement and invalidity contentions, served opening and rebuttal expert reports, filed claim construction briefs, and conducted several depositions.” Additionally, “the court also had held a claim construction hearing and construed the disputed claim terms.” Importantly, the scheduled district court trial date of March 10, 2025, was “eleven months before the Board’s projected final written decision date.” Given these factors, the Director concluded that “factor 3 strongly favors discretionary denial.”

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On March 26, 2025, the United States Patent and Trademark Office (USPTO) announced temporary changes to how the Patent Trial and Appeal Board (PTAB) will manage its workload, particularly concerning America Invents Act (AIA) trial proceedings such as inter partes reviews (IPRs) and post-grant reviews (PGRs).

Key Changes to Institution Decisions

The memorandum, issued by Acting Under Secretary of Commerce for Intellectual Property and Acting Director Coke Morgan Stewart, establishes a bifurcated approach for handling institution decisions:

  1. Separation of discretionary and merits considerations: Decisions on whether to institute an IPR or PGR will be split between discretionary considerations and merit-based/statutory considerations.
  2. Director’s role: “The Director, in consultation with at least three PTAB judges, will determine whether discretionary denial of institution is appropriate.” If denial is appropriate, the Director will issue that decision directly.
  3. Panel review: If discretionary denial is not appropriate, the petition will be referred to a three-member PTAB panel for normal handling, including a decision on institution addressing the merits.

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On March 24, 2025, the USPTO officially reinstated the Fintiv factors framework for discretionary denials in post-grant proceedings with parallel litigation, following the February 2025 rescission of its 2022 Interim Procedure. This significant policy shift returns authority to Patent Trial and Appeal Board (PTAB)  judges to deny institution of inter partes reviews (IPRs) or post-grant reviews (PGRs) when parallel proceedings exist in district courts or the International Trade Commission (ITC), using a multi-factor analysis that weighs timing, resource efficiency, and overall merits. The decision reinforces the USPTO’s priority on preventing duplicative litigation and potentially upholds a higher bar for challenging patents when concurrent proceedings are underway.

The memo, signed by Chief Administrative Patent Judge Scott R. Boalick, informs PTAB members that the USPTO is returning to its previous guidance, including the precedential decisions in Apple Inc. v. Fintiv, Inc. and Sotera Wireless, Inc. v. Masimo Corp.

Key Points from the Memorandum:

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In a recent order in Omega Liner Company, Inc. v. BUERGOFOL GmbH, the Patent Trial and Appeal Board denied Patent Owner’s request to submit new inventor declarations with its sur-reply, highlighting the high bar for introducing new evidence late in inter partes review proceedings.

The case involves Patent 9,657,882 B2, where two inventors, Dr. Boutrid and Mr. Schleicher, previously provided declarations supporting the Patent Owner’s Response. The controversy arose when Petitioner Omega Liner alleged in its Reply that these declarations contained false statements and misrepresentations.

Majority Finds No “Extraordinary Circumstances”

Judge Grace Karaffa Obermann, writing for the majority, emphasized that Patent Owner failed to demonstrate the “extraordinary circumstances” required to deviate from rule 37 C.F.R. § 42.23(b) prohibiting new declaration evidence with a sur-reply.  “Importantly, Patent Owner does not ‘acknowledge, let alone address, its burden to establish ‘extraordinary circumstances’ that could warrant waiving the rule barring new’ declaration evidence with a sur-reply,” the Board noted.

The majority was unconvinced by Patent Owner’s argument that “the only way to raise facts to the Board’s attention is by submission of declaration testimony,” finding it conclusory and insufficient to justify the extraordinary relief requested.  “Patent Owner is free to explain in its Sur-reply why and how the Reply misquotes or misconstrues documents in the record, without reliance on the proposed new declarations,” Judge Obermann wrote.

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