Failure To Identify The Difference Makes A Difference

There have been a few short articles floating around over the past few years that list the top (usually four or five) mistakes that petitioners have made to doom their IPR/CBM petitions. These articles sometimes refer to the need for the petitioner to pay attention to detail, but then often fail to go into detail … Continue Reading

Petitioner’s Fatal Failure to Dot the “i”s in Allegedly Published Prior Art

By Kevin D. Hogg on February 11, 2016 Posted in Institution / Denial

In Hewlett-Packard Co. v. U.S. Philips Corp., et al., IPR2015-01505, Paper 16 (Jan. 19, 2016), HP’s Petition asserted that the claims of the patent at issue, US 5,777,992 relating to MPEG audio, were invalid in view of three references, each allegedly a “printed publication”: (1) Chambers; (2) MPEG 89-051; and, (3) MASCAM 1988. In its … Continue Reading

PTAB Confronts Issues Raised By IPR Remand From Federal Circuit

By Kevin D. Hogg on December 23, 2015 Posted in Inter Partes Review, Trial Procedures

In issuing a second final decision in Microsoft Corp. v. Proxyconn Inc., IPR2012-00026/ IPR2013-00109, Paper No. 80 (Dec. 9, 2015), the PTAB dealt with a “what do we do now,” both procedurally and substantively, after its initial final decision was reversed in part and remanded “for further proceedings” by the Federal Circuit in an opinion … Continue Reading

Don’t Try To Observe Your Own Witness

By Kevin D. Hogg on November 4, 2015 Posted in Inter Partes Review, Trial Procedures

While it is obviously frustrating when an opponent files a paper citing snippets of your own expert’s testimony out of context, a party’s attempt here to right the wrong after the fact was rebuffed by the PTAB and illustrates why mastering the PTAB’s guidelines and prior decisions, and thinking ahead with the same firmly in … Continue Reading

PTAB Considers Qualifications To Testify Concerning The Understanding of One of Ordinary Skill

By Kevin D. Hogg on September 17, 2015 Posted in Inter Partes Review, Trial Procedures

En route to holding the claims of the challenged patent invalid, the PTAB addressed two issues regarding the qualifications of a declarant providing testimony concerning how one of ordinary skill would understand the applied prior art. U.S. Endoscopy Group, Inc. v. CDX Diagnostics, Inc., IPR2014-00639, Paper 27 (Sept. 14, 2015). The first issue was whether … Continue Reading

PTAB Clarifies Meaning of Prior Art “Of Record” and “Known” In Context of a Motion to Amend – What Now?

By Kevin D. Hogg on July 23, 2015 Posted in Inter Partes Review

In MasterImage 3D, Inc. v. RealD Inc., the Patent Trial and Appeal Board (PTAB) reaffirmed that the patent owner bears the burden of establishing the patentability of any amended claims proposed in an AIA trial over two categories of prior art: (a) the “prior art of record” and (b) “prior art known to the patent … Continue Reading