Trial Procedures

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Your Supplemental Evidence is Timely, but is it Relevant to a Claim at Issue? PTAB Will Decide.

Once a trial has been instituted at the PTAB, a party seeking consideration of supplemental evidence may file a motion in accordance with the following requirements: (1) the request for the authorization to file a motion to submit supplemental information must be made within one month of the date the trial was instituted; and (2) … Continue Reading

Intuitive to Use Versus Use of an Element for its Intended Purpose – Is There a Difference?

Is there a difference between saying that it would be intuitive to use the features of one prior art reference in combination with another, versus saying that such a combination merely uses a prior art element for its established function? According to two recent decisions, the Federal Circuit apparently thinks so. In In re: Van … Continue Reading

One Fish, Two Fish, Red Fish, Enfish: Unraveling the Maze of Parallel Court/PTAB Proceedings

The saga of Enfish v. Microsoft continues.  The Enfish litigation provides a textbook example of the multi-pronged defense now common with the advent of post-grant review and the evolving law concerning unpatentable subject matter.  Many are no doubt aware of the significant Federal Circuit decision on patentable subject matter (i.e. Section 101) which this litigation … Continue Reading

Federal Circuit to take AIA Time Bar issue En Banc

As we had predicted in a previous post, the Federal Circuit, on January 4, 2017, granted patent owner Wi-Fi One LLC’s petitions for rehearing en banc regarding the interpretation of, and interplay between, 35 U.S.C. § 314(d) (the No Appeal provision) and § 315(b) (the Time Bar provision).  A few months ago, we wrote about … Continue Reading

Guidance on Requesting Motions for Sanctions

On November 10, 2016, the Intellectual Property Owners Association (IPO) hosted a panel discussion entitled Ethics in AIA Post-Grant Proceedings at the PTAB with the Honorable Thomas Giannetti, Lead Administrative Patent Judge of the PTAB. The main topic of the discussion was guidance on motions for sanctions.  The rules relating to trial practice before the … Continue Reading

Federal Circuit Dismisses Appeal Based on AIA Time Bar, But Two Judges Call for En Banc Review

An updated discussion of this issue is available here: Federal Circuit to Take AIA Time Bar Issue En Banc In Click-to-Call Techs. v. Oracle Corp., Appeal 15-1242 (Fed. Cir. Nov. 17, 2016) (non-prec.), on remand from the Supreme Court for further consideration in view of Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016) … Continue Reading

To Antedate, Must an Inventor Prove “Continuous Reasonable Diligence” or “Reasonably Continuous Diligence”?

A split panel of the Federal Circuit held that the PTAB applied a standard that was too exacting when it required an inventor to prove the “continuous exercise of reasonable diligence” to antedate a prior art reference. Rather, the PTAB should have applied the rule of reason to determine if the inventor proved that there … Continue Reading

Federal Circuit Reverses PTAB’s Anticipation Decision: Proof of Prior Conception Improperly Excluded as Hearsay

The Federal Circuit reversed, in part, a PTAB final written decision after determining that several emails, wrongly excluded as hearsay, showed the inventor’s conception prior to allegedly anticipating art.  In REG Synthetic Fuels, LLC v. Neste Oil Oyj,  No. 2015-1773 (Fed. Cir. Nov. 18, 2016), the Federal Circuit reversed the PTAB’s finding that a prior … Continue Reading

Supreme Court Declines to Weigh in on AIA Issues

The Supreme Court recently issued orders (Oct. 3 and Oct. 11) denying several petitions for certiorari challenging aspects of AIA trials. As we previously reported, two of those petitions challenged the constitutionality of AIA trials and the Patent Office’s authority to cancel patent rights between private parties. Cooper v. Lee, __ S.Ct. __, 2016 WL … Continue Reading

Who Must Bear the Burden of Proof Regarding Patentability of Amended Claims?

On August 12, 2016, the Federal Circuit issued an order vacating its decision in In re Aqua Products, Inc., 823 F.3d 1369 (Fed. Cir. 2016), and reinstating the appeal after granting the aggrieved patent owner’s petition for rehearing en banc.  We wrote about this decision a few months ago: The Federal Circuit confirmed in a … Continue Reading

PTAB Improperly Shifted Burden of Proof in IPR

In In Re Magnum Oil Tools International Ltd., the Federal Circuit reversed the PTAB’s final decision cancelling challenged claims for obviousness because the record did not include substantial evidence of a motivation to combine references, and because the PTAB improperly shifted the burden of proof on this issue to the patent owner. Petitioner McClinton Energy … Continue Reading

PTAB Extends a Helping Hand to Petitioner: Advising Petitioner to File Supplemental Evidence Rather Than Supplemental Information

In a bit of “inside baseball,” the PTAB recently clarified the difference between supplemental evidence and supplemental information.  Practitioners would do well to give careful attention to this distinction.  The difference can have profound consequences to an IPR Petitioner. In Generico LLC v. Dr. Falk Pharma GmbH, IPR2016-00297, Paper No. 15 (July 15, 2016), the … Continue Reading

The Possibility of Inconsistent Results Inherent to Congress’s Design of AIA Trial Reviews

In Cuozzo Speed Technologies, LLC v. Lee, the Supreme Court recognized that a “district court may find a patent claim to be valid, and the agency may later cancel that claim in its own review.”  The Court also recognized that because of the different evidentiary burdens in court versus before the agency—the Patent Office—“the possibility … Continue Reading

Supreme Court Upholds Use of BRI Standard in Cuozzo

In Cuozzo Speed Technologies, Inc., v. Lee, the Supreme Court affirmed the Federal Circuit’s decision, upholding the PTAB’s use of the BRI standard for claim interpretation in IPRs, and determining that 35 U.S.C. § 314(d) bars judicial review of the PTAB’s decision to institute review on grounds not specifically raised in the IPR petition.… Continue Reading

The PTAB Has No Sympathy for the Last Minute Filer

Institution was denied in two IPR proceedings on the grounds that the petitions were filed more than one year after petitioner was served with a complaint alleging patent infringement. The documents were electronically filed but proof of payment of filing fees were one minute and nine minutes late, respectively. Additionally service had not been completed … Continue Reading

PTAB Provides Procedural Guidance with Five Precedential Opinions

The Patent Trial and Appeal Board recently designated five opinions as “precedential.” Each of these opinions addresses procedural aspects of AIA proceedings, including requests for additional discovery, the one-year time period for filing a petition, amending claims, and requirements for PTAB consideration of a petition. A summary of each opinion follows.… Continue Reading

Trial Verdict Means Time Has Run Out to Get a Stay

Federal district courts are inclined to stay patent litigations when requested by patent challengers on the basis that the patent-in-suit is undergoing an AIA review proceeding at the USPTO; and those not so inclined, specifically in the Eastern District of Texas, have been corrected by the Federal Circuit. But this favorable disposition toward stays occurs … Continue Reading

Motion(s) to Amend (Almost Always) Denied!

Responsive to public interest in whether it is too difficult for Patent Owners to amend claims during PTAB Trials, the Patent Office recently published a study providing aggregate data about motions to amend filed with the PTAB since its inception in 2013.  The study, which was published by PTAB Chief Judge Nathan Kelly in the … Continue Reading

Avoid Stumbling Before You Get To The Merits Of A PTAB Appeal

In Harmonic Inc. v. Avid Technology, Inc., the Federal Circuit concluded that the PTAB’s practice of denying IPR institution on redundant grounds is appropriate.  The Court’s decision is important because it should counsel prospective petitioners to carefully select grounds on which to petition review and offer an explanation in the petition as to why multiple … Continue Reading

PTAB Cannot Cancel Claim Based on New Argument Raised at Final Hearing

In Dell, Inc. v. Acceleron, LLC, Case No. 2015-1513, -1514 (Fed. Cir. 2016), the Federal Circuit vacated in part the PTAB’s final written decision in IPR2013-00440, on the basis that the PTAB improperly canceled a claim based on a factual assertion first raised by the petitioner at final hearing, too late for the patent owner … Continue Reading

Federal Circuit Provides Further Guidance on Administrative Procedures For Motions to Amend Claims

In Nike, Inc. v. Adidas AG, Case No. 2014-1719 (Fed. Cir. Feb. 11, 2016) (appeal of IPR2013-00067), the Federal Circuit provided further guidance on the PTAB’s administrative procedures regarding motions to amend claims. After considering Nike’s argument that 35 U.S.C. § 316(e) places the burden of proving unpatentability on the petitioner in an IPR, the … Continue Reading
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