Docket No. 2-15-2072 (IPR2014-00245)
PROST, BRYSON, WALLACH
October 24, 2017
Brief summary: PTAB denial of SP’s Motion to Amend because SP did not show the proposed new claims “recite patent-eligible subject matter under 35 U.S.C. § 101″ vacated and the case remanded for further proceedings consisting with the FC’s Oct. 4, 2017 en banc Aqua Products decision (remanding the case “to the Board to issue a final decision under § 318(a) assessing the patentability of the proposed substituted claims without placing the burden of persuasion on the patent owner.”)
Summary: Silver Peak (SP) appealed PTAB IPR final written decision (FWD) US 8,392,684 B2 relating to data encryption. During IPR, the PTAB granted SP’s Motion to Amend to the extent that it request[ed] to cancel claims 1-24” but determined SP had “not met its burden with respect to proposed substitute claims 25-48”. The PTAB described that burden in this case to be showing that the proposed new claims “recite patent-eligible subject matter under 35 U.S.C. § 101.” The FC panel, without comment, vacated and remanded “this case…to the Board for further proceedings consistent with Aqua” (en banc decision, Oct. 4, 2017).