Trial Procedures

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One Year Time Bar Runs from Date of Service, Regardless of Whether Suit is Dismissed

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

Trial Practice Guide Updates and Future Fee Increases

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
Today’s Federal Register includes a notice that the Patent Office updated its August 2012 Trial Practice Guide. The Federal Circuit recently noted that the Practice Guide “is a thoughtful and useful resource to which individual Board members and the public might turn for guidance,” but “is not binding on Board panel members.” Application in Internet … Continue Reading

PTAB Failed to Properly Apply Test for Printed Publication

By Julianne M. Hartzell on Posted in Inter Partes Review, Trial Procedures
The Federal Circuit vacated and remanded the PTAB’s decision that a video demonstration and slides distributed by Petitioner Medtronic at three industry meetings and conferences were not publicly accessible and, thus, were not “printed publications.” Medtronic, Inc. v. Barry, Case no. 17-1169, 2018 WL 2769092 (Fed. Cir. June 11, 2018). Recent Board decisions have set … Continue Reading

Federal Circuit Requests Briefing from Patent Office Regarding § 315(b) Time-Bar Determinations

By Ryan N. Phelan on Posted in Appeals, Inter Partes Review, IPR, Real Party-in-Interest, Trial Procedures
On June 7, 2018, the Federal Circuit in Wi-Fi One, LLC v. Broadcom Corp. requested that intervenor, Patent Office director Andrei Iancu, and appellee Broadcom, file a response to Wi-Fi One’s second petition for rehearing.  Wi-Fi One, Case No. 2015-1944, Docket No. 212 (June 7, 2018).  At issue was whether the court should grant Wi-Fi … Continue Reading

No SAS-based Relief on Appeal, Unless Requested

By Sandip H. Patel on Posted in Appeals, Inter Partes Review, Trial Procedures
Left in the wake of the Supreme Court’s SAS decision (discussed here) are a number of appeals pending before the Federal Circuit concerning Patent Trial and Appeal Board final written decisions in inter partes review (IPR) proceedings administered on a subset of claims and grounds presented in the IPR petition. While litigants before the Board … Continue Reading

IPR and Estoppel after SAS Institute

By Julianne M. Hartzell on Posted in Estoppel, Inter Partes Review, Post Grant Review, Trial Procedures
The Supreme Court held on April 24, 2018 that if the Patent Office institutes and 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. SAS Institute, Inc. v. Iancu, (discussed in greater detail here). Within days, the Patent Office … Continue Reading

Patent Office Proposes to Jettison BRI in AIA Trials

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, Post Grant Review, Trial Procedures
The Patent Office today issued a press release of its notice of proposed rulemaking that would replace the broadest reasonable interpretation standard the Patent Trial and Appeal Board applies to construe unexpired patent claims and proposed substitute (amended) claims in AIA trial proceedings with the Phillips standard applied in patent cases before federal district courts … Continue Reading

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

By Sandip H. Patel and Michael R. Weiner on Posted in Covered Business Method, Estoppel, Institution / Denial, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
On April 24, 2018, the Supreme Court issued its decision in SAS Institute, Inc. v. Iancu, 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 Circuit’s … 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

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

By Michael R. Weiner on Posted in Inter Partes Review, IPR, Trial Procedures
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

By Michael R. Weiner on Posted in Estoppel, Institution / Denial, Inter Partes Review, Trial Procedures
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

By Ryan N. Phelan on Posted in Appeals, Covered Business Method, Inter Partes Review, IPR, Section 101, Trial Procedures
Update: On June 10, 2019, the Supreme Court issued a decision, 6-3, reversing the Federal Circuit’s judgment and remanding the case for further proceedings. The Court held that “a federal agency is not a ‘person’ who may petition for post-issuance review under the AIA.” On August 9, 2019, the Federal Circuit issued an order vacating … Continue Reading

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

By Kate Nuehring Su on Posted in Amendments, Inter Partes Review, IPR, Trial Procedures
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

By Julianne M. Hartzell on Posted in CBM, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
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

By Michael R. Weiner on Posted in Amendments, Trial Procedures
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

By Sandip H. Patel on Posted in Amendments, Inter Partes Review, IPR, Trial Procedures
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

By Michael R. Weiner on Posted in Inter Partes Review, IPR, Sections 102/103, Trial Procedures
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

By Sandip H. Patel on Posted in Appeals, Institution / Denial, Joinder, Trial Procedures
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

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

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

By Sandip H. Patel on Posted in Legislation, Trial Procedures
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

By Michael R. Weiner on Posted in Claim Construction, Inter Partes Review, Sections 102/103, Trial Procedures
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.

thumbnail image of DNA strandBy Eric M. Brusca, Ph.D. on Posted in Biotechnology, Inter Partes Review, IPR, Trial Procedures
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
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