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1 Table of Contents Page I. Patentability Requirements... 1 A. Inventorship/Invention and Priority Dates Conception... 1 B. Prior Art Invalidity Reference Disclosure... 1 a. Inherency... 1 i. Information/Printed Matter Limitations... 1 b. Disclosing negative limitations Obviousness ( 103)... 1 a. Differences Between the Prior Art and the Claims at Issue... 1 i. Prior Art is Genus of Claimed Species... 1 ii. Level of Abstraction in Framing Obviousness... 2 iii. Common Sense Changes / Design Choices... 2 iv. Prior art Method Results in Claimed Composition... 2 b. Motivation/Apparent Reason to Combine... 2 c. Reasonable Expectation of Success (Enablement?)... 2 d. Secondary Indicia of Nonobviousness... 3 i. Licensing... 3 ii. Nexus... 3 e. Level of Ordinary Skill... 3 f. Teaching Away... 3 C. Section Presumption is Independent... 3 D. Invalidity Based on Written Description ( 1)... 3 a. Aspirational Claims... 3 b. Negative Limitations... 4 E. Post-Issuance Invalidity Reissued Patents... 4 a. Recapture Rule... 4 i. Surrendered Subject Matter... 4 II. Other Defenses... 4 A. Lack of Subject Matter Jurisdiction ITC Jurisdication... 4 B. Section 256 Inventorship Actions... 4 C. ANDA Infringement Defenses... 5 D. Testing for FDA Purposes (271(e)(1))... 5 III. Literal Infringement... 5 A. Summary Judgment/JMOL Noninfringement Stipulation Based on Claim Construction Despite Expert Testimony... 5 B. Infringement by Foreign Acts Foreign Products Made Using a Patented Process (271(g))... 5 Active i

2 IV. DOE Infringement... 6 A. Substantial Equivalence Summary Judgment/JMOL... 6 V. Relief... 6 A. Entire Market Value Rule/Convoyed Sales Apportionment... 6 B. Injunction Permanent Injunction... 6 a. Irreparable Injury... 6 i. Causal Nexus... 6 C. ITC Exclusion Orders and Civil Penalties... 6 D. Reasonable Royalty Expert Testimony and Methodology Patents That are SEPs and/or Subject to FRAND... 7 E. Lost Profits Price Variance... 7 VI. Claim Construction... 7 A. Special Constructions Broadest Reasonable Interpretation During Prosecution... 7 B. Claim Language Ordinary Meaning... 8 a. Grammar Rules... 8 b. Exceptions... 8 i. Prosecution/Specification Disavowal... 8 c. Negative Limitations Open/Closed Claims, Generic and Negative Limitations... 8 a. Portions of Elements... 8 b. Defining/Positioning/Connecting Terms Effect of Other Limitations in Claim... 9 a. Different terms have different meanings... 9 C. Written Description Lexicography... 9 a. Definition by Intrinsic Use Figures Related Applications... 9 a. Incorporation Rather than Sharing Priority... 9 D. Term-Specific Case Law... 9 E. Timing of Construction and Parties Positions Waiver a. PTAB Agreed and Proposed Constructions a. Agreement to Construe Identically VII. Procedural Law A. Construction Statutes/Regulations Active ii

3 B. Discovery/Evidence Surrebuttal Evidence at Trial VIII. Federal Circuit Appeals A. New Arguments/Issues on Appeal/Waiver/Judicial Estoppel District Court/ITC Appeals a. Claim Construction Waiver i. Jury Arguments and Instructions PTO Appeals a. Appeals from PTAB Decision Appellee Failure to Respond to Argument in Appellant Brief B. Appellate Jurisdiction Standing to Appeal C. Scope of Claim Construction Review Deference to Underlying Fact Findings D. Standards of Review and Record/Appendix on Appeal Review Judgments not Opinions a. Agency Rulings E. Remand Determination Remand to Resolve Issue with New Construction IX. Patent Office Proceedings A. Constitutionality B. Inter Partes Review Amendments Evidentiary Rulings Submitting Supplemental Information C. Covered Business Method Reviews Review of Institution Decision Covered Business Method Scope D. Rejection Appeal Procedure Refusal to Consider to New Evidence Active iii

4 I. Patentability Requirements A. Inventorship/Invention and Priority Dates 1. Conception [T]he facts and law of conception focus on whether the evidence presented by the applicant demonstrates that the inventor had a definite idea of the invention, as it would thereafter be applied in practice. In re Steed, , 10/1/15. B. Prior Art Invalidity 1. Reference Disclosure a. Inherency i. Information/Printed Matter Limitations The first step of the printed matter analysis is the determination that the limitation in question is in fact directed toward printed matter. Our past cases establish a necessary condition for falling into the category of printed matter: a limitation is printed matter only if it claims the content of information. In re DiStefano, , 12/17/15. Nothing in the claim calls for origin identification to be inserted into the content of the web asset. Therefore, the Board erred in finding that the origin of the web assets constituted printed matter in the claims at issue. In re DiStefano, , 12/17/15. b. Disclosing negative limitations The Board therefore concluded that an optional inclusion of a feature in the prior art anticipates a claim that excludes the feature..... The Board s finding and conclusion were both correct. Prolitec, Inc. v. ScentAir Techs., Inc., , 12/4/ Obviousness ( 103) Weighing secondary considerations against showing of obviousness from prior art is factual: The court weighed the secondary consideration evidence against the other evidence of obviousness and concluded that the secondary consideration evidence was not sufficiently strong to overcome the showing of obviousness arising from an analysis of the prior art. That conclusion was not clearly erroneous. Cubist Pharms., Inc., v. Hospira, Inc., , 11/12/15. a. Differences Between the Prior Art and the Claims at Issue i. Prior Art is Genus of Claimed Species Singling out a particular subset of patients for treatment (for example, patients with a particular gene) may reflect a new and useful invention that is patent eligible despite the existence of prior art or a prior art patent disclosing the treatment method to patients Active

5 generally. An obviousnessrejection likely would not be appropriate where the new patient subset displayed unexpected results. Prometheus Labs., Inc. v. Roxane Labs., Inc., , 11/10/15. Judgment of obviousness was upheld where each limitation distinguishing the claimed species from the prior art genus was suggested by different prior art. Prometheus Labs., Inc. v. Roxane Labs., Inc., , 11/10/15. ii. Level of Abstraction in Framing Obviousness Federal Circuit has consistently held that what is critical is what combined teachings of the references would have suggested to those of ordinary skill in the art. MCM Portfolio LLC v. Hewlett-Packard Co., , 12/2/15. iii. Common Sense Changes / Design Choices [O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention. Belden Inc. v. Berk-Tek, LLC, , 11/5/15 (emphasis in original). iv. Prior art Method Results in Claimed Composition Where District Court found that purification methods in the prior art were sufficient to produce claimed levels of purity, obviousness was upheld. Cubist Pharms., Inc., v. Hospira, Inc., , 11/12/15. b. Motivation/Apparent Reason to Combine Use of suitable in one reference to describe a component was sufficient evidence of a motivation to insert components that other references described as suitable. Merck & Cie v. Gnosis S.p.A., , 12/17/15. First, the district court did not clearly err in finding that one of skill would have been motivated to modify the prior art 50/50 mixture to make the claimed mixture. If it is known that the desired activity all lies in one isomer, surely, it is better, and there is generally motivation, to try to obtain the purest compound possible. Spectrum Pharm., Inc. v. Sandoz Inc., , 10/2/15. c. Reasonable Expectation of Success (Enablement?) The Supreme Court s passage [at KSR Int l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)] does not establish that it suffices for obviousness that a variation of the prior art would predictably work, but requires consideration of whether, in light of factors such as design incentives and other market forces, the hypothetical skilled artisan would recognize the potential benefits and pursue the variation. Belden Inc. v. Berk-Tek, LLC, , 11/5/15. Active

6 d. Secondary Indicia of Nonobviousness i. Licensing Although evidence that the licensee ultimately manufactured a product that embodies the claimed invention may be probative of a nexus between the claimed invention and the licensing activity, the patentee is not necessarily required to establish an independent nexus between those products and the claimed invention for the licensing activity to be relevant. South Al. Med. Science Found. v. Gnosis S.p.A., , 12/17/15. ii. Nexus Board s finding of no nexus upheld where an expert testified that two primary features posited as responsible for the commercial success were unrelated to the asserted claims. SightSound Techs., LLC v. Apple, Inc., , 12/15/15. e. Level of Ordinary Skill Art can legitimately serve to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness. Ariosa Diagnostics v. Verinata Health, Inc., , 11/16/15. Specifications can include admissions of what one skilled in the art at the time of the invention would have known. In re Morsa, , 10/19/15. f. Teaching Away Board had substantial evidence to reject teaching away where some references taught disadvantages, but others taught advantages of a certain feature. Merck & Cie v. Gnosis S.p.A., , 12/17/15. C. Section Presumption is Independent Once the PTO has issued a certificate of correction, a court may invalidate the certificate only upon a showing of clear and convincing evidence that it was improperly issued. Cubist Pharms., Inc., v. Hospira, Inc., , 11/12/15. D. Invalidity Based on Written Description ( 1) a. Aspirational Claims The fact that the inventors were mistaken as to one aspect of the structure of [the claimed composition] at the time the application... was filed does not render the specification inadequate to satisfy the written description requirement. Cubist Pharms., Inc., v. Hospira, Inc., , 11/12/15. Active

7 b. Negative Limitations The question that remains is whether properly describing alternative features without articulating advantages or disadvantages of each feature can constitute a reason to exclude under the standard articulated in Santarus. We hold that it can. Inphi Corp. v. Netlist, Inc., , 11/13/15. E. Post-Issuance Invalidity 1. Reissued Patents a. Recapture Rule i. Surrendered Subject Matter When the applicants cancelled one of several claims that were rejected for obviousness, but which was the only claim rejected on indefiniteness grounds and the applicants ultimately succeeded in overcoming the obviousness objection to the other claims, there was no surrender of subject matter by the cancellation. Cubist Pharms., Inc., v. Hospira, Inc., , 11/12/15. II. Other Defenses A. Lack of Subject Matter Jurisdiction 1. ITC Jurisdication In section 1337(a), despite Chevron deference and a contrary ITC position, articles means material things, whether when looking to the literal text or when read in context with a view to [the term s] place in the overall statutory scheme. As a result, ITC has no jurisdiction to address importation in the form of electronic transmission of digital data. ClearCorrect Operating, LLC v. Int l Trade Comm n, , 11/10/15. B. Section 256 Inventorship Actions [C]oncrete and particularized reputational injury can give rise to Article III standing. Shukh v. Seagate Tech., LLC, , 10/2/15. A genuine issue of material fact regarding reputational injury raised when evidence was presented that an inventorship omission injured [the omitted inventor s] reputation in at least two ways: first, it harmed his reputation as an inventor in the field of semiconductor physics, and second, it contributed to his reputation for poor teamwork due in part to his accusations that others were stealing his work. Moreover, Dr. Shukh presented evidence trier of fact could conclude that these reputational harms had economic consequences namely, that Dr. Shukh was unable to find employment after he was terminated. Shukh v. Seagate Tech., LLC, , 10/2/15. Active

8 C. ANDA Infringement Defenses Even where defendant stipulated to future importation of an amount meeting the claim requirement, there was no infringement because [t]he product that is likely to be sold following FDA approval is what [the] ANDA describes... which would be far less than [the amount required by the claim]. Spectrum Pharm., Inc. v. Sandoz Inc., , 10/2/15. D. Testing for FDA Purposes (271(e)(1)) The routine quality control testing of each batch of generic enoxaparin as part of the postapproval, commercial production process is therefore not reasonably related to the development and submission of information to the FDA, and it was clearly erroneous to conclude otherwise. Momenta Pharm., Inc. v. Teva Pharm. USA Inc., , 11/10/15. III. Literal Infringement A. Summary Judgment/JMOL 1. Noninfringement Stipulation Based on Claim Construction Where judgment is based on stipulation, appeals court should affirm the judgment if this court determines that the claim construction is correct under the appropriate standard. Openwave Sys., Inc. v. Apple, Inc., , 12/15/ Despite Expert Testimony Expert testimony as to separate state information found not to satisfy separate protocol requirement despite expert conclusion that it did so in view of fact witness testimony of a single protocol. Denial of JMOL of noninfringement overturned. CAFC admits that it is finding for Cisco. Commil USA LLC v. Cisco Sys., Inc., , 12/28/15. B. Infringement by Foreign Acts 1. Foreign Products Made Using a Patented Process (271(g)) [I]t is more consonant with the language of the statute, as well as with this court s precedent, to limit 271(g) to the actual ma[king] of a product, rather than extend its reach to methods of testing a final product or intermediate substance to ensure that the intended product or substance has in fact been made. Momenta Pharm., Inc. v. Teva Pharm. USA Inc., , 11/10/15. Active

9 IV. DOE Infringement A. Substantial Equivalence 1. Summary Judgment/JMOL To survive summary judgment of noninfringement under the doctrine of equivalents, [patentee] had to present evidence of equivalence under each prong of the function-wayresult test. Advanced Steel Recovery, LLC v. X-Body Equip., Inc., , 11/12/15. Expert declaration pointing to fulfillment of other limitations is not evidence of equivalence for limitation at issue. Advanced Steel Recovery, LLC v. X-Body Equip., Inc., , 11/12/15. V. Relief A. Entire Market Value Rule/Convoyed Sales 1. Apportionment Fundamentally, the smallest salable patent-practicing unit principle states that a damages model cannot reliably apportion from a royalty base without that base being the smallest salable patent-practicing unit. Commonwealth Sci. & Indus. Research Org. v. Cisco Sys., Inc., , 12/3/15. Because the parties discussions centered on a license rate for the 069 patent, this starting point for the district court s analysis already built in apportionment. Put differently, the parties negotiated over the value of the asserted patent, and no more. Commonwealth Sci. & Indus. Research Org. v. Cisco Sys., Inc., , 12/3/15. B. Injunction 1. Permanent Injunction a. Irreparable Injury i. Causal Nexus This just means that there must be proof that the infringement causes the harm. Apple, Inc. v. Samsung Elecs. Co., , 12/16/15. C. ITC Exclusion Orders and 1. Civil Penalties Amount of civil penalty reviewed to determine if ITC abused its discretion. DeLorme Publishing Co. v. Int l Trade Comm n, , 11/12/15. Active

10 Affirming penalties even where underlying patent found invalid in subsequent district court case and affirmed the same day. DeLorme Publishing Co. v. Int l Trade Comm n, , 11/12/15. D. Reasonable Royalty 1. Expert Testimony and Methodology [G]iven the great financial incentive parties have to exploit the inherent imprecision in patent valuation, courts must be proactive to ensure that the testimony presented using whatever methodology is sufficiently reliable to support a damages award. Commonwealth Sci. & Indus. Research Org. v. Cisco Sys., Inc., , 12/3/ Patents That are SEPs and/or Subject to FRAND [T]he district court erred in failing to account for value accruing to the 069 patent from the standard s adoption. Commonwealth Sci. & Indus. Research Org. v. Cisco Sys., Inc., , 12/3/15. E. Lost Profits 1. Price Variance Lost profits allowed for 75% of sales despite infringer s price being half of patentee s based on direct competitors and customer s revenue generation resulting from the product. Akamai Techs., Inc. v. Limelight Networks, Inc., , 11/16/15. VI. Claim Construction Teva has no impact on construction in case S.Ct. GVR d under Teva, even where previous decision based its analysis on information it imprecisely referred to... as extrinsic evidence. CardSoft v. VeriFone, Inc., n. 1, , 12/2/15. [I]t is not enough that the district court may have heard extrinsic evidence during a claim construction proceeding rather, the district court must have actually made a factual finding in order to trigger Teva s deferential review.... And even then, we may nevertheless review the district court s constructions de novo if the intrinsic record fully determines the proper scope of the disputed claim terms. CardSoft v. VeriFone, Inc., , 12/2/15. A. Special Constructions 1. Broadest Reasonable Interpretation During Prosecution Even under BRC, failure to include an implied disclaimer based on specification description of disadvantages was error. SightSound Techs., LLC v. Apple, Inc., , 12/15/15. Active

11 PTAB s conclusion is not a reasonable interpretation of the claim language when it ignores present tense impact of is in the claim limitation. Straight Path IP Group, Inc. v. Sipnet EU S.R.O., , 11/25/15. B. Claim Language 1. Ordinary Meaning a. Grammar Rules Claim construction reversed because it did not take into account present tense impact of is in the claim limitation. Straight Path IP Group, Inc. v. Sipnet EU S.R.O., , 11/25/15. b. Exceptions i. Prosecution/Specification Disavowal Negative limitation adopted because [t]he disadvantages identified by the specification of records, tapes, and CDs amount to implied disclaimer of those three media. However, limitation did not extend to other removeable media that was not mentioned. SightSound Techs., LLC v. Apple, Inc., , 12/15/15. Looking to the specification and relying on remarks that disparage and, therefore, disclaim to limit construction. Openwave Sys., Inc. v. Apple, Inc., , 12/15/15. c. Negative Limitations Claimed step limited by without the use of a [element] read as having a broad negative limitation because the claim uses the term generically, referring to a [element] meaning one or more rather than a specific [element]. Imaginal Systematic, LLC v. Leggett & Platt, Inc., , 11/10/ Open/Closed Claims, Generic and Negative Limitations a. Portions of Elements The proximate end of an element more appropriately construed as the last part rather than as the back half. Advanced Steel Recovery, LLC v. X-Body Equip., Inc., , 11/12/15. b. Defining/Positioning/Connecting Terms Defendant s argument that the unambiguous meaning of optimal is a single best is also unconvincing. Akamai Techs., Inc. v. Limelight Networks, Inc., , 11/16/15. Active

12 3. Effect of Other Limitations in Claim a. Different terms have different meanings Use of space construed differently than two uses of chamber. Prolitec, Inc. v. ScentAir Techs., Inc., , 12/4/15. C. Written Description Under our Phillips approach, the plainness of the claim language necessarily affects what ultimate conclusions about claim construction can properly be drawn based on the specification. Straight Path IP Group, Inc. v. Sipnet EU S.R.O., , 11/25/ Lexicography a. Definition by Intrinsic Use When claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. Straight Path IP Group, Inc. v. Sipnet EU S.R.O., , 11/25/ Figures Structural figure for compound named Formula 3 in claim did not determine the proper construction where Formula 3 was also described in the specification in terms of its manufacture and a physical example, both of which where inconsistent with one portion of the structural figure. Cubist Pharms., Inc., v. Hospira, Inc., , 11/12/ Related Applications a. Incorporation Rather than Sharing Priority Patent incorporated by reference as an example of a system subject to a negative claim limitation did not define the limitation beyond the ordinary meaning of its language. Imaginal Systematic, LLC v. Leggett & Platt, Inc., , 11/10/15. D. Term-Specific Case Law [T]here is nothing improper about relying on decisions in previous cases to inform an understanding of a disputed term s ordinary meaning. CardSoft v. VeriFone, Inc., n. 1, , 12/2/15. Active

13 E. Timing of Construction and Parties Positions 1. Waiver a. PTAB We hold that Straight Path did not preserve that contention. It did not request a construction of process in its preliminary response to Sipnet s petition to institute inter partes review, in its response after the Board instituted the review, or at the oral hearing before the Board. Straight Path IP Group, Inc. v. Sipnet EU S.R.O., , 11/25/ Agreed and Proposed Constructions a. Agreement to Construe Identically There are three claim terms at issue... the parties agreed that the claim terms should be analyzed and construed together. Accordingly, we will construe them together. Openwave Sys., Inc. v. Apple, Inc., , 12/15/15. VII. Procedural Law A. Construction 1. Statutes/Regulations Redline s arguments [for interpreting a PTAB regulation] rely, in part, on rules of statutory construction.... The Supreme Court has found that canons of statutory construction are not mandatory rules. They are guides that need not be conclusive. Redline Detection, LLC v. Star Envirotech, Inc., , 12/31/15. Federal Circuit affirmed PTAB s denial of a motion based on factors not listed in the regulation based on the guiding principle for the PTAB in making any determination is to eensure efficient administration of the Office and the ability of the Office to complete IPR proceedings in a timely manner. as stated in 35 U.S.C. 316(b). Redline Detection, LLC v. Star Envirotech, Inc., , 12/31/15. B. Discovery/Evidence 1. Surrebuttal Evidence at Trial Where new enough matter is allowed on rebuttal, surrebuttal may be allowed, but a proffer of specifics may be required to justify the additional round of evidentiary submissions. Belden Inc. v. Berk-Tek, LLC, , 11/5/15. Active

14 VIII. Federal Circuit Appeals A. New Arguments/Issues on Appeal/Waiver/Judicial Estoppel 1. District Court/ITC Appeals a. Claim Construction Waiver i. Jury Arguments and Instructions The lack of further limitations was itself a characteristic of the construction to which both parties agreed. Limelight cannot argue at the jury instruction stage after the bulk of the trial was framed and directed by the Markman construction to which it agreed that the construction was somehow too broad. Akamai Techs., Inc. v. Limelight Networks, Inc., , 11/16/ PTO Appeals a. Appeals from PTAB Decision Because this court s review of the PTAB s decision is confined to the four corners of that record[,]... it is important that the applicant challenging a decision not be permitted to raise arguments on appeal that were not presented to the [PTAB]. Redline Detection, LLC v. Star Envirotech, Inc., , 12/31/15 (applying In re Watts [354 F.3d 1362, 1367 (Fed. Cir. 2004)] rule to the PTAB). 3. Appellee Failure to Respond to Argument in Appellant Brief By failing to respond to VeriFone s argument in the briefing, CardSoft has effectively conceded that the accused devices run applications that depend on a specific underlying operating system or hardware. Consequently, we find that CardSoft has waived this argument. CardSoft v. VeriFone, Inc., , 12/2/15. B. Appellate Jurisdiction 1. Standing to Appeal Even if a sanctions order against a party could be construed as a formal remand against its attorneys, after settlement of all claims brought in the case, the Federal Circuit concluded that we do not find we can redress the Attorneys claimed injury and thus dismissed the attorneys appeal. Tesco Corp. v. National Oilwell Varco, L.P., , 10/30/15. Active

15 C. Scope of Claim Construction Review 1. Deference to Underlying Fact Findings Board s determination as to what a specification example disclosed was subsidiary factual determination regarding the nature of [specification language and] was supported by substantial evidence. Prolitec, Inc. v. ScentAir Techs., Inc., , 12/4/15. D. Standards of Review and Record/Appendix on Appeal 1. Review Judgments not Opinions a. Agency Rulings Although the Patent Trial and Appeal Board erred in its assessment of the evidence of licensing, the Board s other factual findings are supported by substantial evidence. Because we agree with the Board s ultimate conclusion of obviousness in light of those findings, we affirm. South Al. Med. Science Found. v. Gnosis S.p.A., , 12/17/15. We may affirm an agency ruling if we may reasonably discern that it followed a proper path, even if that path is less than perfectly clear.... We also may affirm if an erroneous portion of an agency s ruling is ultimately non-prejudicial, i.e., not material to the bottom-line result given other portions of the agency s ruling. Ariosa Diagnostics v. Verinata Health, Inc., , 11/16/15. E. Remand Determination 1. Remand to Resolve Issue with New Construction [T]he district court erred in construing.... Because there is no ruling about infringement under any other claim construction, we vacate the summary judgment of noninfringement and remand for further proceedings. Atlas IP, LLC v. St. Jude Med., Inc., , 10/29/15. IX. Patent Office Proceedings A. Constitutionality Congress has [granted the PTO the authority to correct or cancel an issued patent] by creating the ex parte reexamination proceeding in 1980; the inter partes reexamination procedure in 1999; and inter partes review, post-grant review, and Covered Business Method patent review in MCM Portfolio LLC v. Hewlett-Packard Co., , 12/2/15. Governing Supreme Court and Federal Circuit authority require rejection of MCM s argument that inter partes review violates Article III. MCM Portfolio LLC v. Hewlett- Packard Co., , 12/2/15. Active

16 Here, when Congress created the new statutory right to inter partes review, it did not violate the Seventh Amendment by assigning its adjudication to an administrative agency. MCM Portfolio LLC v. Hewlett-Packard Co., , 12/2/15. B. Inter Partes Review A petitioner in an inter partes review has the burden of proving a claim s invalidity by a preponderance of the evidence. Ariosa Diagnostics v. Verinata Health, Inc., , 11/16/15. In an IPR, [a] patent owner... is undoubtedly entitled to notice of and a fair opportunity to meet the grounds of rejection. Belden Inc. v. Berk-Tek, LLC, , 11/5/ Amendments The PTO s approach that the patentee s burden on a motion to amend includes the burden to show patentability over prior art from the patent s original prosecution history is not in conflict with any statute or regulation. Prolitec, Inc. v. ScentAir Techs., Inc., , 12/4/ Evidentiary Rulings We review the Board s evidentiary ruling for abuse of discretion, which may be found if the Board violated governing law. Belden Inc. v. Berk-Tek, LLC, , 11/5/ Submitting Supplemental Information The AIA authorizes the filing of supplemental information with the PTAB during the course of an IPR, 35 U.S.C. 316(a)(3), and the USPTO promulgated regulations pursuant to that authority. In particular [Section ]. Redline Detection, LLC v. Star Envirotech, Inc., , 12/31/15. Federal Circuit affirmed PTAB s decision to deny expert declaration submitted after institution where petitioner s only justification for not providing it with the petition was to note that the move was cost effective. PTAB was correct to take into account impact on its ability to timely handle IPRs in view of [t]he guiding principle for the PTAB in making any determination is to ensure efficient administration of the Office and the ability of the Office to complete IPR proceedings in a timely manner. Redline Detection, LLC v. Star Envirotech, Inc., , 12/31/15. C. Covered Business Method Reviews 1. Review of Institution Decision The statutory provision for CBMRs bars this Court from reviewing whether the Board properly initiated review when obviousness was not explicitly raised in the petitions. SightSound Techs., LLC v. Apple, Inc., , 12/15/15. Active

17 2. Covered Business Method Scope Affirming Board determination that a combination of known technologies does not amount to a technological invention. SightSound Techs., LLC v. Apple, Inc., , 12/15/15. Board determination as to both CBM scope and technological invention exclusion affirmed because [t]he Board s reasoning is not arbitrary or capricious and substantial evidence supports its findings here. SightSound Techs., LLC v. Apple, Inc., , 12/15/15. D. Rejection Appeal Procedure 1. Refusal to Consider to New Evidence Even for a pro se applicant, the Board would not consider evidence first presented on appeal and not to the examiner prior to appeal. In re Steed, , 10/1/15. Active