The Federal Circuit vacated the PTAB’s finding of nonobviousness of Verinata’s patent directed to methods of noninvasive prenatal testing, and remanded the case back to the Board. The Federal Circuit remanded because it couldn’t conclude whether the Board erred based on the PTAB’s opinion. The Board’s language was too vague to come to a definitive conclusion on this point. In its explanation for vacating and remanding the case, the Federal Circuit clarified the appropriate circumstances where the PTAB could limit its consideration of a prior art reference.
Continue Reading Getting it Right the First Time in IPR Petitions: Ariosa v. Verinata

On September 15, 2015, the USPTO announced the “Streamlined, Expedited Patent Appeal Pilot for Small Entities.” This program allows small entities to expedite an ex parte appeal to the PTAB, similar to the program announced on June 19, 2015, for parties with multiple appeals pending at the PTAB.
Continue Reading PTAB Pilot Program for Small Entities to Expedite Ex Parte Appeals

Claim construction is perhaps the single most crucial factor in most patent disputes, but it is also one of the most convoluted. Beyond all the other intricacies involved in claim construction, another wrinkle is that the U.S. has two claim construction standards: (1) the “broadest reasonable interpretation” (“BRI”) standard applied by the U.S. Patent and Trademark Office (PTO); and (2) the Phillips standard used in district court litigation.1 The PTO BRI standard, which has now been articulated in the PTO Rules implementing the AIA,2 means that patent claim scope is determined not only on the basis of claim language, but by “giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’”3 On the other hand, the Phillips standard used by district courts gives claim terms “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.”4 Importantly, the district court conducts its analysis on the entire record before the court, which may include both intrinsic evidence (the claims, specification, and prosecution history) as well as extrinsic evidence (dictionary definitions and expert testimony), whereas the Patent Trial and Appeal Board (PTAB) generally affords less weight to extrinsic evidence.5
Continue Reading Practical Implications of the Two Claim Construction Standards in the Post-AIA World