The Board’s requirements for amending a claim in inter partes review impose significant limitations for a Patent Owner as compared to conventional patent prosecution, reissue proceedings, or ex parte reexamination.
In its first inter partes review (IPR) decision, the Patent Trial and Appeal Board (PTAB) indicated that it is willing to find obviousness based on a combination of as many as four prior art references, a number which would be unusual in typical district court patent litigation. Garmin Int’l Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper No. 59.
On December 5, 2013, the Supreme Court granted certiorari in Alice Corporation v. CLS Bank, in response to a petition filed on September 4, 2013 in the wake of the en banc CLS Bank decision by the Federal Circuit in May 2013.