Trial Procedures

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No Weight for Unsupported Expert Witness Testimony

By Sandip H. Patel on Posted in Inter Partes Review, Post Grant Review, Trial Procedures
In early February 2023, the Patent Office’s Director designated as precedential the Patent Trial and Appeal Board’s decision in Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022). In this decision, the Board denied a petition seeking inter partes review. The petitioner asserted the challenged patent claims were obvious over printed publication … Continue Reading

A Decision Poised to Pivot on Credibility

By Sandip H. Patel on Posted in Inter Partes Review, IPR, Sections 102/103, Trial Procedures
The Federal Circuit’s recent decision in Google LLC v. IPA Technologies, Inc., Appeals 2021-1179, -1180, and -1185 (Fed. Cir. May 19, 2022), offers three instructive reminders. First, a publication disqualified from consideration as prior art during prosecution may be resurrected as prior art during an AIA trial. Second, the burden of producing evidence is not … Continue Reading

Satisfying the Duty of Disclosure in AIA Trials

By Sandip H. Patel on Posted in Amendments, Inter Partes Review, IPR, Trial Procedures
In ClearOne, Inc. v. Shure Acquisition Holdings, Inc., Appeal 2021-1517, Slip Op. at 2 (Fed. Cir. June 1, 2022), the Federal Circuit affirmed a Patent Trial and Appeal Board order that refused to authorize a sanctions motion the petitioner requested after the Board issued its final written decision granting (in relevant part) the patent owner’s … Continue Reading

IPR Institution Despite Arbitration Agreement Is Not Appealable

By Julianne M. Hartzell on Posted in Appeals, Inter Partes Review, IPR, Trial Procedures
Over a thorough dissent by Judge O’Malley, the Federal Circuit determined it lacked jurisdiction to review the Board’s decision to institute IPR despite an arbitration agreement between the parties. In re Maxpower Semiconductor, Inc., 2021-146, 2021-1950, 2021-1951, 2021-1952, 2021-1953, 2021 WL 4130639 (Fed. Cir. Sept. 8, 2021).… Continue Reading

The Arthrex Mulligan

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Stays, Trial Procedures
The Federal Circuit, in Arthrex, concluded that the Patent and Trial Appeal Board’s Administrative Patent Judges were unconstitutionally appointed “principal” officers. The court therefore vacated the Board’s decision that canceled claims in an inter partes review and remanded so a new panel of APJs would re-decide the patentability of the claims. What happens, however, when … Continue Reading

Assignor Estoppel Does Not Prevent Reliance on PTAB Decision Canceling Claims

By Michael R. Weiner on Posted in Estoppel, Inter Partes Review, IPR, Trial Procedures
In Hologic, Inc. v. Minerva Surgical, Inc., Case 19-2054 (Fed. Cir. Apr. 22, 2020), the Federal Circuit held that an assignor of a patent may rely on a PTAB unpatentability decision as a defense in infringement litigation, although the equitable doctrine of “assignor estoppel” prevents the assignor from directly challenging validity in the litigation. In … Continue Reading

PTAB Determination on One-Year Time Bar Cannot be Appealed

By Julianne M. Hartzell on Posted in Appeals, Inter Partes Review, IPR, Trial Procedures
On April 20, 2020, the Supreme Court held that PTAB decisions instituting IPR are final and non-appealable and that the language of 35 U.S.C. § 314(d) “indicates that a party generally cannot contend on appeal that the agency should have refused “to institute an inter partes review.”  Thryv Inc. v. Click-To-Call Technologies LP, case number … Continue Reading

A Fine Mess

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
Update (Apr. 3, 2020): The Federal Circuit recently denied rehearing petitions in the Polaris appeals referenced below (see link and link), and also denied the PTO’s request to stay the mandate in the Arthrex appeal (see link). The Federal Circuit recently issued an order denying multiple rehearing petitions in Arthrex Inc. v. Smith & Nephew, … Continue Reading

Federal Circuit Affirms Use of “Common Sense” in IPRs

By Thomas L. Duston on Posted in Institution / Denial, Inter Partes Review, IPR, Trial Procedures
In Koninklijke Philips N.V. v. Google LLC, Case No. 2019-1177 (Fed. Cir. January 30, 2020), the Federal Circuit determined that the Board erred in instituting inter partes review based on an obviousness combination that Petitioner Google did not advance in its petition.  Nevertheless, the Federal Circuit agreed that the Board could have properly relied upon … Continue Reading

Time Bar Challenge Must Be Raised before the Board, Not Saved for Appeal

By Michael R. Weiner on Posted in Real Party-in-Interest, Trial Procedures
Since the Federal Circuit’s 2018 en banc decision in Wi-Fi One, LLC v. Broadcom Corporation, (discussed here) the court has reviewed a number of PTAB decisions on whether an IPR petition was filed more than one year after the petitioner was served with a complaint asserting the challenged patent, and thus time-barred under 35 U.S.C. … Continue Reading

Game Not Over – No Estoppel Where Service Is Deemed Insufficient

By Julianne M. Hartzell on Posted in Estoppel, Inter Partes Review, IPR, Trial Procedures
In a case involving online gaming, the Federal Circuit affirmed the PTAB’s decision that 35 U.S.C. § 315(b) did not bar instituting an IPR where the patent owner failed to preserve its arguments that service was perfected. Game and Technology Co., Ltd. v. Wargaming Group Limited, ___ F.3d __, 2019 WL 6121449 (Fed. Cir. Nov. … Continue Reading

Fixing an Appointments Clause Violation

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
In Arthrex Inc. v. Smith & Nephew, Inc., Appeal 2018-2140 (Fed. Cir. Oct. 31, 2019), the Federal Circuit concluded that the PTAB’s Administrative Patent Judges (APJs) are “principal” officers and their appointment by the Secretary of Commerce therefore violates the Constitution’s Appointments Clause. The issue arose in an appeal of a decision by a panel … 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

The Chaos of Too Many Rules

By Sandip H. Patel on Posted in Post Grant Review, Trial Procedures
The Patent Office issued Honeywell a patent that required correction. The patent, according to Honeywell, did not include the proper claim for the benefit of priority to the filing date of an application that Honeywell had earlier filed. But before Honeywell noticed the error and tried to correct that priority claim, its competitor, Arkema, petitioned … Continue Reading

A Reference is Publicly Accessible if a Person of Ordinary Skill in the Art Could Access the Reference

By Julianne M. Hartzell on Posted in Inter Partes Review, IPR, Sections 102/103, Trial Procedures
In a recent decision vacating the PTAB’s finding that a draft standard for video coding emailed to a listserv was not publicly accessible, the Federal Circuit again corrected the PTAB’s application of the legal standard to determine the public accessibility of prior art. Samsung Electronics Co., Ltd. v. Infobridge Pte. Ltd., case no. 2018-2007, 2018-2012, … Continue Reading

Corroboration Required to Prove Earlier Invention Date

By Michael R. Weiner on Posted in Inter Partes Review, IPR, Trial Procedures
As we have discussed (here and here), owners of pre-AIA patents may be able to “swear behind” alleged prior art references by providing evidence of an earlier invention date, but the inventors’ testimony concerning conception of the invention must be corroborated by independent evidence. In Kolcraft Enterprises, Inc. v. Graco Children’s Products, Inc., No. 2018-1259 … Continue Reading

PTAB Must Consider All Grounds Raised in an Instituted Petition

By Julianne M. Hartzell on Posted in Inter Partes Review, Trial Procedures
In AC Technologies S.A. v. Amazon.com, the Federal Circuit confirmed the PTO’s interpretation of SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018) (discussed in greater detail here) requiring that the PTAB address each ground of invalidity raised in an instituted petition in its final written decision. 912 F.3d 1358 (Fed. Cir. 2019).… Continue Reading

Patent Office Announces New Amendments Procedure for AIA Trials

By Sandip H. Patel on Posted in Amendments, Inter Partes Review, Trial Procedures
For AIA trials instituted on or after March 15, 2019, the patent owner may opt-in to a pilot program the Patent Office implemented for motion to amend (“MTA”) practice and procedures in the PTAB’s administration of these trials. Today’s Federal Register (link) includes the Patent Office’s explanation of the program, which it proposed in October … Continue Reading

Newly Appointed Chief Judge Scott Boalick Addresses PTAB Bar Association

By Julianne M. Hartzell on Posted in Inter Partes Review, Trial Procedures
Addressing the PTAB Bar Association Conference in its opening session, newly appointed Chief Judge Scott Boalick explained that his goal as Chief Judge is to bring stability to the board and increase predictability. He wants all parties coming to the Board to feel that they have gotten a fair shake and that the procedures are … 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
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