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 suggests to the witness the answer desired by the examiner.” Is the PTAB, in reading a cold record and applying an unforgiving reading of the rule, setting a dangerous precedent on admissible testimony?
Continue Reading I Object! The PTAB is Leading Practitioners to Inefficient Depositions
PTAB Drops the Hammer on Petitioners: Five IPR Petitions Denied on the Same Day
The Patent Trial and Appeal Board (PTAB) is granting inter partes review (IPR) petitions at a 70% clip. Imagine the surpris
e, 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 that the tides have turned for patent challengers?
Continue Reading PTAB Drops the Hammer on Petitioners: Five IPR Petitions Denied on the Same Day
PTAB Denies CBM Petition for Lack of Standing, Interpreting “Privies” as Customers and Not Suppliers
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 with suit), or be a privy to a party that has been sued (or been threatened with suit). And “privy” in this context is synonymous with customer. In other words, suppliers have a right to step in for their customers with a CBM, but not the other way around.
Continue Reading PTAB Denies CBM Petition for Lack of Standing, Interpreting “Privies” as Customers and Not Suppliers
Footnote on Claim Amendment More Interesting than Federal Circuit Holding?
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 specification and the record evidence,’ and ‘must be consistent with the one that those skilled in the art would reach.’” Microsoft v. Proxyconn, 2014-1542, -1543 (Fed. Cir. June 16, 2015) (“A construction that is ‘unreasonably broad’ and which does not ‘reasonably reflect the plain language and disclosure will not pass muster’”) (internal citations omitted).
Continue Reading Footnote on Claim Amendment More Interesting than Federal Circuit Holding?
PTAB Relaxing its Application of Law Governing IPR Claim Amendments
As discussed yesterday, on June 5, 2015, for just the second time in IPR history, the Board granted a patent owner’s contested motion to amend claims. Reg Synthetic Fuels, LLC v. Neste Oil Oyj, IPR2014-00192 (PTAB June 5, 2015).¹ Are the facts of Neste really so different from the dozens of motions to amend the Board has previously denied, or has something changed?
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Prior Art Must be Analogous to the Entire Scope of Problem
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 claimed invention and, more particularly, the art was not reasonably pertinent to all the problems the inventor faced.
Continue Reading Prior Art Must be Analogous to the Entire Scope of Problem