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PTAB says 58% of Patents Survive Post-grant Proceedings Unchanged

On October 24, 2017, the PTAB held its inaugural “Chat with the Chief” webinar. The main topic of the webinar was to discuss multiple petitions filed against the same patent. The PTAB sought to address concerns that have been raised by patent owners that challengers just keep filing petitions until something sticks, and that petitioners … 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

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

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

ChIPs Conference Coverage

I had the opportunity to attend the ChIPs (Chiefs of Intellectual Property) conference in Washington DC this week and thought that several of the panels that I attended would be of interest to the PTABWatch readership.  The organization is focused on the advancement of women in tech, law, and policy and enjoys strong participation from … Continue Reading

Shhh, It’s a Secret: Failure to Maintain Confidentiality Can Be Costly

On July 1, 2016, The Board awarded attorneys’ fees as a sanction for failure to comply with an agreed protective order. RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, IPR2015-01751, IPR2015-01752 (PTAB July 1, 2016). In these IPRs, the patent owner (AIT) disclosed the petitioner’s (RPX’s) confidential information to its president, an attorney representing … 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

District Court Denies Recovery of PTAB Costs in Non-Exceptional Case

On January 5, a district court denied defendant Westlake Services, LLC’s Motion for recovery of costs related to CBM petitions that invalidated certain of the patent claims asserted in the pending litigation and prompted plaintiff to voluntarily dismiss the district court case. Credit Acceptance Corp. v. Westlake Services, LLC, Case 13cv01523 (C.D. Cal. January 5, … Continue Reading

Federal Circuit Weighs in on Use of Evidence Cited in a Reply

In a decision last week, the Federal Circuit remanded for further consideration the Board’s final written decision concluding that the challenged claims of Verinata Health, Inc.’s U.S. Patent No. 8,318,430 were not obvious. See Ariosa Diagnostics v. Verinata Health,Inc., Case No. 2015-1215, 2015-1226 (Fed. Cir. Nov. 16, 2015). The Board’s conclusion was based, in part, … Continue Reading

PTO Requests Congress Change AIA Proceedings

As required by the Leahy-Smith America Invents Act, the PTO issued a report to Congress in September  summarizing implementation of the AIA  in the four years since the Act went into effect. The report  proposes recommended changes to the law that the PTO would like to see enacted. A full copy of the report is … Continue Reading

IPO Annual Meeting Panel Spars Over Fairness of Current IPR System

Welcome to all of you who are new readers joining us from the IPO Annual Meeting (#IPOAM15). I hope that your time in Chicago was enjoyable and that you will add us to your RSS feeds or bookmark the blog and return often. For those who were unable to attend, the Tuesday panel titled “Post … Continue Reading

AIA Rule Changes About Patent Owner Responses and Misconduct

On August 20, the USPTO published for comment in the Federal Register proposed changes to the rules governing PTAB trials. In general, the proposed amendments address the claim construction standard applied by the Board, evidence that may be included in the patent owner’s response, and a Rule 11-like misconduct standard for practitioners before the PTAB.… Continue Reading

PTAB Allows Second Chance to Prove Patent is a Covered Business Method

Should a Petitioner who failed to obtain institution be allowed to refile and try again? When the initial failure was in proof that a patent is a covered business method (CBM) patent, the Board allowed a second petition to proceed. After the Board initially denied institution (CBM2014-00084), Motorola Mobility successfully obtained institution of a new … Continue Reading

Will Anyone Succeed on a Request for Rehearing of a Final Written Decision?

Although parties continue to file Requests for Rehearing of the PTAB’s Final Written Decision, none have yet succeeded in changing the outcome. According to Docket Navigator (www.docketnavigator.com), to date, 19 motions for rehearing of the Final Written Decision have been filed. Only one, in McLinton Energy Group, LLC v. Magnum Oil Tools International, Ltd., IPR … Continue Reading

Is the Coalition for Affordable Drugs Abusing the IPR Process?

The PTAB granted leave on June 9 for the patent owner, Celgene Corporation, to file a motion for sanctions seeking dismissal in several IPRs¹ filed by the Coalition for Affordable Drugs. The Coalition for Affordable Drugs, an organization created by the hedge fund Hayman Credes Master Fund L.P., has filed multiple IPRs against pharmaceutical companies with … Continue Reading

PTAB Grants Joinder of Proceedings Raising Identical Challenges, but Required Adoption of the Previously Entered Trial Schedule

On May 22, 2015, the Board granted Petitioners Motion for Joinder in Mercedes-Benz USA, LLC and Mercedes-Benz U.S. International, Inc. v. Innovative Display Technologies, LLC, IPR2015-00360. Mercedes-Benz sought to join its proceeding with LG Display Co., Ltd. v. Innovative Display Technologies, LLC, IPR2015-00360, which was instituted on January 13, 2015. Mercedes-Benz filed its petition approximately … Continue Reading
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