There have been a few short articles floating around over the past few years that list the top (usually four or five) mistakes that petitioners have made to doom their IPR/CBM petitions. These articles sometimes refer to the need for the petitioner to pay attention to detail, but then often fail to go into detail about what those details might be.
Continue Reading Failure To Identify The Difference Makes A Difference
Avoid Stumbling Before You Get To The Merits Of A PTAB Appeal
In Harmonic Inc. v. Avid Technology, Inc., the Federal Circuit concluded that the PTAB’s practice of denying IPR institution on redundant grounds is appropriate. The Court’s decision is important because it should counsel prospective petitioners to carefully select grounds on which to petition review and offer an explanation in the petition as to why multiple grounds are not redundant.
Continue Reading Avoid Stumbling Before You Get To The Merits Of A PTAB Appeal
PTAB Cannot Cancel Claim Based on New Argument Raised at Final Hearing
In Dell, Inc. v. Acceleron, LLC, Case No. 2015-1513, -1514 (Fed. Cir. 2016), the Federal Circuit vacated in part the PTAB’s final written decision in IPR2013-00440, on the basis that the PTAB improperly canceled a claim based on a factual assertion first raised by the petitioner at final hearing, too late for the patent owner to meaningfully respond.
Continue Reading PTAB Cannot Cancel Claim Based on New Argument Raised at Final Hearing
When Might a Request for Rehearing of Final Decision Be Worthwhile?
In an earlier blog post from last June, we were unable to find any successful Requests for Rehearing or Reconsideration of a Final Written Decision and concluded that, in most instances, such requests are generally a waste of resources. However, while the PTAB has continued to deny the vast majority of motions for rehearing of a final written decision, it has now granted a few. Those limited number of successful rehearing requests demonstrate that, where you can point to something specific that the Board has overlooked, a request for rehearing may be worthwhile. However, where the Board merely disagrees with your argument, don’t bother.
Continue Reading When Might a Request for Rehearing of Final Decision Be Worthwhile?
Federal Circuit Provides Further Guidance on Administrative Procedures For Motions to Amend Claims
Update: Overruled in part by Aqua Products, Inc. v. Matal.
In Nike, Inc. v. Adidas AG, Case No. 2014-1719 (Fed. Cir. Feb. 11, 2016) (appeal of IPR2013-00067), the Federal Circuit provided further guidance on the PTAB’s administrative procedures regarding motions to amend claims. After considering Nike’s argument that 35 U.S.C. § 316(e) places the burden of proving unpatentability on the petitioner in an IPR, the court reaffirmed its decision in Microsoft v. Proxyconn that the Patent Office has appropriately placed the burden on the patent owner to show patentability of substitute claims.
Continue Reading Federal Circuit Provides Further Guidance on Administrative Procedures For Motions to Amend Claims
The Board’s Prerogative to Change its Mind May Doom Petition after Institution
In TriVascular, Inc. v. Samuels, Appeal No. 2015-1631 (Fed. Cir. Feb. 5, 2016), a unanimous Federal Circuit panel affirmed a PTAB final written decision that concluded the petitioner (TriVascular) did not meet its burden of demonstrating the challenged claims were unpatentable during inter partes review. TriVascular successfully petitioned the Board to institute the review after the patent owner (Samuels) accused TriVascular of infringing the same patent in a California federal court. TriVascular’s short-lived success, however, was tempered by the Board’s claim construction in the institution decision that differed from the construction TriVascular sought in its petition.
Continue Reading The Board’s Prerogative to Change its Mind May Doom Petition after Institution
Petitioner Blows Smoke with Late-Filed Declaration
In Redline Detection, LLC v Star Envirotech, Inc., the Federal Circuit affirmed a PTAB final written decision that the petitioner failed to show that the challenged claims were obvious, and upholding the PTAB’s decision denying the petitioner’s motion to submit an expert declaration as supplemental evidence, after the PTAB instituted the IPR.
Continue Reading Petitioner Blows Smoke with Late-Filed Declaration
I Object! The PTAB is Leading Practitioners to Inefficient Depositions
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 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
PTAB Confronts Issues Raised By IPR Remand From Federal Circuit
In issuing a second final decision in Microsoft Corp. v. Proxyconn Inc., IPR2012-00026/ IPR2013-00109, Paper No. 80 (Dec. 9, 2015), the PTAB dealt with a “what do we do now,” both procedurally and substantively, after its initial final decision was reversed in part and remanded “for further proceedings” by the Federal Circuit in an opinion available at 789 F.3d 1292 (Fed. Cir. 2015). The Federal Circuit’s partial reversal and remand stemmed from its conclusion that the PTAB, in its initial final decision, construed two claim terms too broadly and employed that misconstruction in finding claims of the patent at issue invalid. Our prior discussion of the Federal Circuit decision is at this link.
Continue Reading PTAB Confronts Issues Raised By IPR Remand From Federal Circuit
Federal Circuit Affirms PTAB’s Victory on Invalidity Ground the Petition Did Not Even Present
In SightSound Techs., LLC v. Apple Inc., Appeal Nos. 2015-1159, -1160 (Fed. Cir. Dec. 15, 2015), the Federal Circuit affirmed the PTAB’s final written decisions in two CBM patent review proceedings that canceled claims in SightSound’s patents as being obvious over prior art (referred to as the CompuSonics publications), even though Apple did not present that specific challenge in its petitions. The Federal Circuit’s decision is important because it shows that the court will not review a PTAB decision to institute an AIA trial on a ground the petitioner did not present.
Continue Reading Federal Circuit Affirms PTAB’s Victory on Invalidity Ground the Petition Did Not Even Present