A PGR is initiated when a third party (a party other than the patent owner) files a petition requesting review, provided that party has not filed a civil action, challenging the validity of the patent in a U. A PGR petition must demonstrate that it is more likely than not that at least one of the claims challenged in the patent is unpatentable. This makes it easier to develop an invalidity attack on a claim in a PGR than a claim in a civil action filed in a U. district court, which uses the “clear and convincing” standard. 41.51(b)(1)(iii) is narrowly directed to specific information known to the responding party to be inconsistent with a position advanced by that party in the proceeding, and not broadly directed to any subject area in general within which the requesting party hopes to discover such inconsistent information.” The PTAB also gave five criteria for determining whether a request for additional discovery is “in the interest of justice”: 1. The first written decision of the PTAB for a CBM issued on June 11, 2013, in the case of ., No. 6,553,350, assigned to Versata, for failure to comply with the patentable subject-matter requirement set forth in 35 U. This opinion was important because it laid out the standard for claim construction that the PTAB will use in all of its AIA reviews, and also because it illustrated how stringent the analysis for CBM will be under section 101—it will not be enough to recite an abstract idea that is implemented on a general-purpose computer to confer patent eligibility to a claim under section 101.
Helsinn’s petition for rehearing en banc was denied. However, the Board has considered§ 112 grounds in deciding motions to amend. that Patent Owner’s proposed substitute claims are unpatentable under 35 U. To date, the Board has not invalidated a single challenged claim under § 112 in an IPR proceeding. authorize IPR petitioners to challenge a patent for lack of written description or indefiniteness under § 112. 318(a) says the Board can issue a final written decision with respect to the patentability. However, this does not mean that the Board is prohibited from invalidating patent claims under § 112 in an IPR.