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PTAB Should Have Determined that Gravity Feed Display Design Patent is Obvious

By Jeremy R. Kriegel on Posted in Appeals, Discovery, Inter Partes Review, IPR, Sections 102/103
In Campbell Soup Co. v. Gamon Plus, Inc. (Fed. Cir. Sept. 26, 2019), the Federal Circuit vacated the PTAB’s decision (discussed here) upholding the validity of Gamon’s design patent D621,645 (“the ‘645 patent”) for soup can display racks.  The court determined that substantial evidence did not support the Board’s finding that Linz is not a … Continue Reading

PTAB Revises Trial Practice Guide To Reflect Recent Decisions On Claim Construction, Petition and Motion Practice

By Raymond R. Ricordati, III on Posted in Amendments, Claim Construction, Discovery, Institution / Denial, Trial Procedures
The Patent Trial and Appeal Board (PTAB) recently published a second update to its Trial Practice Guide (TPG). The TPG, initially released in 2012, was first updated in August 2018 (see here). This second update further revises and/or adds guidance relating to certain general procedures and many aspects of trial practice before the PTAB.… Continue Reading

Petitioner Has Burden of Persuasion on Real Party in Interest

By Michael R. Weiner on Posted in Discovery, Real Party-in-Interest, Trial Procedures
Under 35 U.S.C. § 312(a), an IPR petition must identify “all real parties in interest,” and, an IPR petition is time-barred under 35 U.S.C. § 315(b) if “filed more than 1 year after the date on which the petitioner, the real party in interest, or a privy of the petitioner is served with a complaint alleging … Continue Reading

Should I Stay or Should I Go? – Co-Pending IPR and Litigation Can Lead to Discovery Obligations

By Jeremy R. Kriegel on Posted in Discovery, Stays, Trial Procedures
Fighting a war on two fronts is rarely an enviable strategic position. While district court judges do not always grant stays of patent infringement cases until resolution of co-pending inter partes reviews (IPR’s), accused infringers considering whether to request a stay of litigation should note the PTAB’s February 28, 2018, Order in Becton, Dickinson and … Continue Reading

Patent Agent Privilege Recognized in Final Rulemaking Issued by USPTO

By Jennifer Burnette on Posted in Discovery, Inter Partes Review, IPR, Post Grant Review
On November 7, 2017, the USPTO issued a Final Rule recognizing that communications between U.S. and foreign patent practitioners and their clients that are reasonably necessary and incident to the scope of the patent practitioners’ authority shall receive the same protections of privilege under Federal Law as if the communication were between a client and … Continue Reading

Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings

By Sharon M. Sintich, Ph.D. on Posted in Amendments, Appeals, Discovery, Estoppel, Institution / Denial, Inter Partes Review, IPR, Legislation, Post Grant Review, Real Party-in-Interest, Stays, Trial Procedures
The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate.  The Act is an updated version of the STRONG Patents Act of 2015 that stalled in Congress.  Like its predecessor, the STRONGER Patents Act is designed to significantly modify the AIA trial … Continue Reading

One Fish, Two Fish, Red Fish, Enfish: Unraveling the Maze of Parallel Court/PTAB Proceedings

By Thomas L. Duston on Posted in Discovery, Inter Partes Review, IPR, Trial Procedures
The saga of Enfish v. Microsoft continues.  The Enfish litigation provides a textbook example of the multi-pronged defense now common with the advent of post-grant review and the evolving law concerning unpatentable subject matter.  Many are no doubt aware of the significant Federal Circuit decision on patentable subject matter (i.e. Section 101) which this litigation … Continue Reading

Guidance on Requesting Motions for Sanctions

By Sharon M. Sintich, Ph.D. on Posted in Covered Business Method, Discovery, Inter Partes Review, IPR, Real Party-in-Interest, Trial Procedures
On November 10, 2016, the Intellectual Property Owners Association (IPO) hosted a panel discussion entitled Ethics in AIA Post-Grant Proceedings at the PTAB with the Honorable Thomas Giannetti, Lead Administrative Patent Judge of the PTAB. The main topic of the discussion was guidance on motions for sanctions.  The rules relating to trial practice before the … Continue Reading

Proposed Rule to Recognize Patent Agent Privilege in PTAB Proceedings

By Jennifer Burnette on Posted in Covered Business Method, Discovery, Inter Partes Review, IPR, Post Grant Review
In its Notice of Proposed Rulemaking published on October 18, 2016, the USPTO proposes to amend the rules of practice before the PTAB to “recognize that, in connection with discovery conducted in certain proceedings at the [USPTO], communications between U.S. patent agents or foreign patent practitioners and their clients are privileged to the same extent … Continue Reading

Federal Circuit Again Refuses to Review PTAB’s Application of the Time Bar to AIA Petitions

By Sandip H. Patel on Posted in Discovery, Institution / Denial, Inter Partes Review, Legislation, Real Party-in-Interest
Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is … Continue Reading

PTAB Extends a Helping Hand to Petitioner: Advising Petitioner to File Supplemental Evidence Rather Than Supplemental Information

By Thomas L. Duston on Posted in Discovery, Inter Partes Review, IPR, Trial Procedures
In a bit of “inside baseball,” the PTAB recently clarified the difference between supplemental evidence and supplemental information.  Practitioners would do well to give careful attention to this distinction.  The difference can have profound consequences to an IPR Petitioner. In Generico LLC v. Dr. Falk Pharma GmbH, IPR2016-00297, Paper No. 15 (July 15, 2016), the … Continue Reading

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

By Julianne M. Hartzell on Posted in Discovery
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

PTAB Provides Procedural Guidance with Five Precedential Opinions

By Marshall Gerstein on Posted in Amendments, Discovery, Real Party-in-Interest, Trial Procedures
Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is … Continue Reading

Cross-Pollination of Information From Litigation to IPR Can Lead to Trouble for Parties

thumbnail image of DNA strandBy Katherine L. Neville, Ph.D. on Posted in Biotechnology, Discovery, Inter Partes Review
In a recent order by the magistrate judge in Jazz Pharmaceuticals, Inc. v. Amneal Pharmaceuticals, LLC (NJD, Jan. 22, 2016), defendants Amneal Pharmaceuticals and Par Pharmaceuticals were reprimanded and threatened with sanctions and monetary fines for trying to use confidential information from the litigation to move for additional discovery in a related IPR proceedings.  The judge … Continue Reading

I Object! The PTAB is Leading Practitioners to Inefficient Depositions

By Benjamin T. Horton on Posted in Discovery, Inter Partes Review, Trial Procedures
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

PTAB Warns Again That Prosecution Declarations Without Depositions May Be Given Little or No Weight

thumbnail image of DNA strandBy Marshall Gerstein on Posted in Biotechnology, Discovery, Inter Partes Review
If you rely in an IPR on a declaration submitted during prosecution, the PTAB may give it little or no weight if your opponent cannot cross-examine the declarant. In Praxair Distribution, Inc. v. INO Therapeutics LLC, the PTAB instituted inter partes review of U.S. Patent No. 8,846,112, directed to methods of providing nitric oxide gas … Continue Reading

Federal Circuit Tells Patent Owners That They Can’t Get It If They Don’t Ask For It

By Marshall Gerstein on Posted in Appeals, Discovery, Inter Partes Review, Sections 102/103
If you’re a patent owner faced with an expert declaration submitted by an IPR petitioner on reply, try to respond, and in multiple ways. Don’t just complain that the declaration should be excluded. This was the Federal Circuit’s recent message in Belden Inc. v. Berk-Tek LLC. … Continue Reading

Pharma Patent Owner Attacks Bass IPR Petitions by Requesting Discovery of Real Parties-In-Interest

thumbnail image of DNA strandBy Marshall Gerstein on Posted in Biotechnology, Discovery, Real Party-in-Interest
A picture can be worth a thousand words. This one illustrates the complex web of actual and potential real parties-in-interest (RPIs) that a pharmaceutical patent owner is attempting to pierce for two IPR petitions recently filed by Coalition For Affordable Drugs II—one of several similarly-named creations of hedge-fund manager Kyle Bass and his Hayman Credes … Continue Reading

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

By Julianne M. Hartzell on Posted in Discovery, Inter Partes Review, Joinder
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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