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
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
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
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
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 … Continue Reading
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
The material contained on this blog is provided for informational purposes only and does not constitute legal advice. Views expressed are those of the author and are not to be attributed to Marshall, Gerstein & Borun LLP or any of its clients. The publication and receipt of any information contained on this blog does not create an attorney-client relationship with Marshall, Gerstein & Borun LLP or with any of its attorneys. Readers should not act upon any information on this site without seeking professional legal counsel.