Trial Procedures

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Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims

On April 24, 2018, the Supreme Court issued its decision in SAS Institute, Inc. v. ComplementSoft, LLC, holding that if the Patent Office institutes an inter partes review (IPR) proceeding, it must issue a final written decision with respect to the patentability of every patent claim challenged by the petitioner. The Court reversed the Federal … Continue Reading

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

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

Is the PTAB Bound by a Prior Federal Circuit Claim Construction?

In Knowles Electronics LLC v. Cirrus Logic, Inc., No. 2016-2010 (Fed. Cir. Mar. 1, 2018), the Federal Circuit affirmed a PTAB decision that upheld an examiner’s rejection of claims for anticipation in an inter partes reexamination (IPX). The same claims had earlier been challenged, and determined to be not invalid (over different prior art), in … Continue Reading

Patent Owner Estoppel May Apply When Patent Owner Cancels Claims Before IPR Institution

In Arthrex, Inc. v. Smith & Nephew, Inc., No. 2017-1239 (Fed. Cir. Jan. 24, 2018), the Federal Circuit affirmed the PTAB’s entry of adverse judgment against Patent Owner Arthrex, before instituting inter partes review. Specifically, the PTAB entered judgment after Arthrex had disclaimed all challenged claims, but before the PTAB decided whether to institute a … Continue Reading

The United States Can Have Standing in AIA Proceedings

PTABWatch Takeaway: When “sued for infringement” within the meaning of 28 U.S.C. § 1498(a), the United States has standing to petition the Patent Office to institute Covered Business Method (CBM) review.  Return Mail v. U.S. Postal Service, Appeal 2016-1502 (Fed. Cir. Aug. 28, 2017) Background Patentee, Return Mail, Inc., filed suit in the U.S. Court … Continue Reading

Board Issues Guidance on Motions to Amend in View of Aqua Products

The PTAB’s Chief Administrative Patent Judge issued a memorandum on November 21, 2017, providing guidance on motions to amend in view of the en banc decision of the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (discussed here and here).  The court in Aqua Products determined that the Board could … Continue Reading

PTAB says 58% of Patents Survive Post-grant Proceedings Unchanged

On October 24, 2017, the PTAB held its inaugural “Chat with the Chief” webinar. The main topic of the webinar was to discuss multiple petitions filed against the same patent. The PTAB sought to address concerns that have been raised by patent owners that challengers just keep filing petitions until something sticks, and that petitioners … Continue Reading

Aqua Products Dissent Would Keep Burden for Amendments on Patent Owners

As discussed here, the en banc Federal Circuit vacated and remanded the PTAB’s decision in Aqua Products, Inc. v. Matal, determining that the PTAB erred in placing the burden of persuasion on the patent owner for proposed claim amendments. Four judges on the eleven-judge en banc panel dissented, and would have upheld the PTO’s rule, … Continue Reading

Fractured Federal Circuit Reallocates Burden of Proof in AIA Trials

An eleven-judge en banc panel of the Federal Circuit issued its long awaited decision in Aqua Products, Inc. v. Matal, Appeal 2015-1777, on October 4, 2017, vacating and remanding the IPR final decision for the PTAB to determine whether the patent owner’s proposed amended claims are patentable. The court’s decision includes five separate opinions, though … Continue Reading

Petitioner Made Rebuttal Argument in Reply, Not an Improper New Argument

PTAB rules prohibit raising new arguments in a reply brief, but it can be difficult to distinguish between an improper reply argument and a proper rebuttal. In Idemitsu Kosan Co. v. SFC Co., No. 2016-2721 (Fed. Cir. Sept. 15, 2017), the Federal Circuit determined that the IPR petitioner properly made a rebuttal argument—not a belated, … Continue Reading

Adding Two More to the List of Serious Questions about AIA Trials

In a routine AIA trial, the PTAB determined that challenged claims in a patent directed to HVAC systems were unpatentable as being obvious and anticipated by prior art. This trial was unusual, however, because the Board premised its anticipation conclusion on a joined IPR petition that successfully rectified evidentiary deficiencies in the same petitioner’s earlier … Continue Reading

Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings

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

Supreme Court to Decide Whether PTAB May Institute/Decide AIA Trials on Fewer than All Challenged Claims

An updated discussion of this issue is available here: Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims The Supreme Court issued an order on May 22, 2017, granting SAS Institute’s petition for a writ of certiorari to review the Federal Circuit’s judgment in SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341 … Continue Reading

Owner of Hot-Work Steel Processing Patent Burned by Its Own IPR Evidence

In Rovalma, S. A. Böhler-Edelstahl GmbH & Co., No. 2016-2233 (Fed. Cir. May 11, 2017), the Federal Circuit vacated the PTAB’s final written decision and remanded the case for the PTAB to provide a further explanation for its determination that the challenged claims were obvious. According to the court, the PTAB’s decision lacked sufficient detail … Continue Reading

Your Supplemental Evidence is Timely, but is it Relevant to a Claim at Issue? PTAB Will Decide.

Once a trial has been instituted at the PTAB, a party seeking consideration of supplemental evidence may file a motion in accordance with the following requirements: (1) the request for the authorization to file a motion to submit supplemental information must be made within one month of the date the trial was instituted; and (2) … Continue Reading

Intuitive to Use Versus Use of an Element for its Intended Purpose – Is There a Difference?

Is there a difference between saying that it would be intuitive to use the features of one prior art reference in combination with another, versus saying that such a combination merely uses a prior art element for its established function? According to two recent decisions, the Federal Circuit apparently thinks so. In In re: Van … Continue Reading

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

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

Federal Circuit to take AIA Time Bar issue En Banc

An updated discussion of this issue is available here: PTAB’s Time Bar Determinations Are Reviewable by the Federal Circuit As we had predicted in a previous post, the Federal Circuit, on January 4, 2017, granted patent owner Wi-Fi One LLC’s petitions for rehearing en banc regarding the interpretation of, and interplay between, 35 U.S.C. § … Continue Reading

Guidance on Requesting Motions for Sanctions

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

Federal Circuit Dismisses Appeal Based on AIA Time Bar, But Two Judges Call for En Banc Review

On January 19, 2018, the Federal Circuit issued an order vacating the decision discussed in the post below and reinstating the appeal for reconsideration in view of the court’s en banc decision in Wi-Fi One LLC v. Broadcom Corporation, which we discuss here. A new decision on the merits may be expected later in 2018. In Click-to-Call … Continue Reading

To Antedate, Must an Inventor Prove “Continuous Reasonable Diligence” or “Reasonably Continuous Diligence”?

A split panel of the Federal Circuit held that the PTAB applied a standard that was too exacting when it required an inventor to prove the “continuous exercise of reasonable diligence” to antedate a prior art reference. Rather, the PTAB should have applied the rule of reason to determine if the inventor proved that there … Continue Reading

Federal Circuit Reverses PTAB’s Anticipation Decision: Proof of Prior Conception Improperly Excluded as Hearsay

The Federal Circuit reversed, in part, a PTAB final written decision after determining that several emails, wrongly excluded as hearsay, showed the inventor’s conception prior to allegedly anticipating art.  In REG Synthetic Fuels, LLC v. Neste Oil Oyj,  No. 2015-1773 (Fed. Cir. Nov. 18, 2016), the Federal Circuit reversed the PTAB’s finding that a prior … Continue Reading

Supreme Court Declines to Weigh in on AIA Issues

The Supreme Court recently issued orders (Oct. 3 and Oct. 11) denying several petitions for certiorari challenging aspects of AIA trials. As we previously reported, two of those petitions challenged the constitutionality of AIA trials and the Patent Office’s authority to cancel patent rights between private parties. Cooper v. Lee, __ S.Ct. __, 2016 WL … Continue Reading
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