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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 closely related to its decision whether to institute inter partes review and is therefore rendered nonappealable by§314(d).”

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An updated discussion of this issue is available here: Federal Circuit to Take AIA Time Bar Issue En Banc

Original Post: The Federal Circuit has again concluded it may not review the PTAB’s institution of inter partes review (IPR) over a patent owner’s objections that the IPR petition is time-barred. Wi-Fi One, LLC v. Broadcom Corp., Appeal 2015-1944 (Fed. Cir. Sept. 16, 2016). The court’s conclusion may be somewhat surprising because earlier this summer, in another case, the Supreme Court issued an order vacating the Federal Circuit’s decision that reached a similar conclusion. Click-to-Call Technologies, LP v. Oracle Corp., 622 Fed. Appx. 907 (Fed. Cir. 2015) (per curiam), vacated, 136 S. Ct. 2508 (Mem) (2016). We discussed that case and the Court’s order here.
Continue Reading Federal Circuit Again Refuses to Review PTAB’s Application of the Time Bar to AIA Petitions

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A PTAB decision denying a patent owner’s motion for discovery concerning privity illustrates what may be a carefully-structured business transaction that permitted a petitioner to avoid the effect of the one-year time-bar for filing a petition under 35 U.S.C. § 315(b). 
Continue Reading Petitioner Avoids One-Year Time Bar by Acquiring ANDAs after Filing IPR Petition

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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 PTAB entered an order regarding the conduct of proceedings.  The order addressed the Petitioner’s request to file a motion to supplement information pursuant to 37 C.F.R. §42.123.  The Petitioner sought to file information in response to objections the Patent Owner made to evidence submitted by Petitioner.  Specifically, the Patent Owner had objected that Petitioner’s prior art references would not have been relied upon by a person of ordinary skill in the art, and that the Petitioner’s declarant was not qualified to speak to the views of a person of ordinary skill in the art.  To address these objections, the Petitioner sought the PTAB’s authorization to file a supplemental declaration and documents from a parallel district court litigation.
Continue Reading Advise Petitioner to File Supplemental Evidence Instead Of Information

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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 it in a district court case to which RPX is not a party, and to the CFO of a non-practicing patent licensing company serving as an advisor to AIT. In its order allowing RPX to seek attorneys’ fees, the Board emphasized the importance of promoting respect for and meticulous observance of protective orders.
Continue Reading Shhh, It’s a Secret: Failure to Maintain Confidentiality Can Be Costly

MapUpdate: 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 closely related to its decision whether to institute inter partes review and is therefore rendered nonappealable by§314(d).”

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Original Post: The Patent Trial and Appeal Board recently designated five opinions as “precedential.” Each of these opinions addresses procedural aspects of AIA proceedings, including requests for additional discovery, the one-year time period for filing a petition, amending claims, and requirements for PTAB consideration of a petition. A summary of each opinion follows.
Continue Reading PTAB Provides Procedural Guidance with Five Precedential Opinions

Bumble beeIn 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 ruled this behavior violated a Discovery Confidentiality Order (DCO) in place in the litigation.  
Continue Reading Cross-Pollination of Information From Litigation to IPR Can Lead to Trouble for Parties

X OutRecently, 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 suggests to the witness the answer desired by the examiner.”  Is the PTAB, in reading a cold record and applying an unforgiving reading of the rule, setting a dangerous precedent on admissible testimony?
Continue Reading I Object! The PTAB is Leading Practitioners to Inefficient Depositions

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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 for treating newborn children suffering from hypoxia.

In response, the Patent Owner relied not only on a supporting expert declaration, but also on three declarations submitted during prosecution of the ’112 patent.
Continue Reading PTAB Warns Again That Prosecution Declarations Without Depositions May Be Given Little or No Weight

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

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.