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Kevin D. Hogg focuses his practice on litigation and counseling concerning patents, trademarks, unfair competition and trade secrets, and works with a wide variety of products and technologies. During his 25+ year career, he has appeared in federal courts across the United States in cases ranging from the relatively modest to complex multidistrict actions with claimed damages in excess of $100 million. He regularly advises highly respected innovators, such as The Procter & Gamble Company, on intellectual property matters. Read full bio here.

Up and down arrowsThere 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 about what those details might be.
Continue Reading Failure To Identify The Difference Makes A Difference

Watch OutIn 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 (optional) response to the Petition the Patent Owner asserted that HP failed to establish that any of these references qualified as a “printed publication.” Indeed, HP did fail – lulled into a sense of security that turned out to be unwarranted – and as a result the PTAB declined to institute an inter partes review of any of the challenged claims.1 This presents another PTAB practice teachable moment.
Continue Reading Petitioner’s Fatal Failure to Dot the “i”s in Allegedly Published Prior Art

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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 available at 789 F.3d 1292 (Fed. Cir. 2015). The Federal Circuit’s partial reversal and remand stemmed from its conclusion that the PTAB, in its initial final decision, construed two claim terms too broadly and employed that misconstruction in finding claims of the patent at issue invalid. Our prior discussion of the Federal Circuit decision is at this link.
Continue Reading PTAB Confronts Issues Raised By IPR Remand From Federal Circuit

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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 mind, is paramount. Seagate Technology (US) Holdings, Inc. v. Enova Technology Corp., IPR2014-01178, Paper 45 (Oct. 28, 2015).
Continue Reading Don’t Try To Observe Your Own Witness

En route to holding the claims of the challenged patent invalid, the PTAB addressed two issues regarding the qualifications of a declarant providinBathroom_Scale_clip_art_hightg 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 the declarant needed to be qualified as an “expert” on the relevant subject matter under Fed.R.Evid. 701, 702, at least in instances where the testimony was not sought to be excluded. 
Continue Reading PTAB Considers Qualifications To Testify Concerning The Understanding of One of Ordinary Skill

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 owner.” IPR2015-00040, Paper 42 (PTAB July 15, 2015). Nothing new there. What is new is the PTAB’s “clarification” of what constitutes such prior art: 
Continue Reading PTAB Clarifies Meaning of Prior Art “Of Record” and “Known” In Context of a Motion to Amend – What Now?