On January 24, 2014, the USPTO published proposed rules for patent assignment recordation that would require applicants to also include attributable owner information. The proposal would include a “ultimate parent entity” that owns 50 % or more of the titleholder. See Federal Register at 79 FR 4105 (2014). While discussion of the proposal continues, there would be potential concerns if the proposed attributable ownership rules were applied to findings of privity in an Inter Partes Review (IPR) proceeding.
Two recent Final Written Decisions from inter partes review proceedings offer patent owners a rare positive news – the survival of one or more of the challenged claims in its entirety. Prior to these opinions, a Final Written Decision in an inter partes review or post-grant review always resulted in altering the challenged claim(s) in some respect. Although the Board in each decision took different routes to reach their conclusions, the analyses in both turned on extrinsic evidence. These decisions emphasize the importance of supporting arguments on claim construction and patentability with evidence outside the four corners of the challenged patent. These two decisions are Microsoft Corp. v. Proxyconn, Inc. IPR 2012-00026 and 2013-00109 and Synopsis, Inc. v. Mentor Graphics Corp., IPR2012-00042.
David A. Collins
Two recent Board final decisions denying the patent owner’s motion to amend claims provide further guidance regarding the strict and exacting requirements for filing a successful amendment during an Inter Partes Review (IPR) proceeding.