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I Object! The PTAB is Leading Practitioners to Inefficient Depositions

By Benjamin T. Horton on Posted in Discovery, Inter Partes Review, Trial Procedures
Recently, the PTAB excluded Patent Owner expert witness testimony because during the expert’s deposition, on redirect, Patent Owner’s counsel asked leading questions.  IPR2014-01146, Paper 36, pg. 6.  The PTAB relied on Federal Rule of Evidence 611(c), and cited to McCormick on Evidence, § 6 (7th ed. 2013), which states “[a] leading question is one that … Continue Reading

PTAB Drops the Hammer on Petitioners: Five IPR Petitions Denied on the Same Day

By Benjamin T. Horton on Posted in Estoppel, Institution / Denial, Inter Partes Review, Sections 102/103
The Patent Trial and Appeal Board (PTAB) is granting inter partes review (IPR) petitions at a 70% clip.  Imagine the surprise, then, when on a single day, September 16, 2015, petitioners went an incredible 0 for 5—the PTAB denied five petitions for IPR and granted none!  It seemed like a statistical improbability.  Maybe a signal … Continue Reading

PTAB Denies CBM Petition for Lack of Standing, Interpreting “Privies” as Customers and Not Suppliers

By Benjamin T. Horton on Posted in Covered Business Method
Acxiom Corp. v. Phoenix Licensing LLC (CBM2015-00068, Paper 23) presents a rare denial of a petition for covered business method review (as of June 25, 2015, CBM petitions are granted at a rate of over 70%).  In denying the petition,  the PTAB stressed that, to have standing, a petitioner must have been sued (or threatened … Continue Reading

Footnote on Claim Amendment More Interesting than Federal Circuit Holding?

By Benjamin T. Horton on Posted in Amendments, Claim Construction, Inter Partes Review
Last Tuesday, for the first time ever, the Federal Circuit reversed the PTAB in an IPR decision by, among other things, ratcheting back the “broadest reasonable construction” standard for claim construction by declaring the PTAB’s construction “unreasonable.”  The Court said that, “[e]ven under the broadest reasonable interpretation, the board’s construction ‘cannot be divorced from the … Continue Reading

Prior Art Must be Analogous to the Entire Scope of Problem

By Benjamin T. Horton on Posted in Inter Partes Review
On May 26, 2015, the Board issued its final written decision in Schott Gemtron Corp. v. SSW, IPR2014-00367, confirming the patentability of all of the challenged claims of U.S. Patent No. 8,286,561 (“the ’561 patent”).¹ The Board concluded the prior art on which the petitioner, Schott Gemtron Corporation, relied was not analogous to the ’561 patent’s … Continue Reading
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