Although parties continue to file Requests for Rehearing of the PTAB’s Final Written Decision, none have yet succeeded in changing the outcome. According to Docket Navigator (www.docketnavigator.com), to date, 19 motions for rehearing of the Final Written Decision have been filed. Only one, in McLinton Energy Group, LLC v. Magnum Oil Tools International, Ltd., IPR 2013-00231, has been granted. Unfortunately for the patent owner in that case, although the request for rehearing was granted and the Board agreed to reconsider its Final Decision, it ultimately declined to make any modification.
Continue Reading Will Anyone Succeed on a Request for Rehearing of a Final Written Decision?
Digital Rights Patent Declared Patent Eligible Under DDR Holdings
Prior t
o the Federal Circuit’s opinion in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), software and Internet patents seemed on a relentless march towards ineligibility. The Federal Circuit’s decision in DDR Holdings tapped the brakes on this skid towards elimination, and suggested that claims to the implementation of long established economic practices on computers might survive where those claims focused on overcoming obstacles in the implementing technologies themselves.
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Footnote on Claim Amendment More Interesting than Federal Circuit Holding?
Last Tuesday, for the first time ever, the Federal Circuit reversed the PTAB in an IPR decision by, among other things, ratcheting back the “broadest reasonable construction” standard for claim construction by declaring the PTAB’s construction “unreasonable.” 
The Court said that, “[e]ven under the broadest reasonable interpretation, the board’s construction ‘cannot be divorced from the specification and the record evidence,’ and ‘must be consistent with the one that those skilled in the art would reach.’” Microsoft v. Proxyconn, 2014-1542, -1543 (Fed. Cir. June 16, 2015) (“A construction that is ‘unreasonably broad’ and which does not ‘reasonably reflect the plain language and disclosure will not pass muster’”) (internal citations omitted).
Continue Reading Footnote on Claim Amendment More Interesting than Federal Circuit Holding?
Evidence of Denial of IPR Institution Allowed in District Court Infringement Action
On June 19, 2015 the District Court for the Middle District of Florida denied Defendants’ motion in limine requesting the exclusion of evidence relating to a denial of an IPR institution from the Patent Trial and Appeal Board (Stoneeagle Services, Inc. v. Pay-Plus Solutions, Inc. et al, 8-13-cv-02240 (FL MD)). This decision contradicts recent decisions in other jurisdictions in which the results of IPR decisions have not been allowed in District Court actions (see Interdigital Commc’ns, Inc. v. Nokia Corp., No. 13-10-RGA,2014 WL 8104167 (D. Del. Sept. 19, 2014) and Ultratec, Inc. et al. v. Sorenson Communications, Inc., No. 3:13-CV-00346 (W.D. Wisc. Oct. 8, 2014 ).
Continue Reading Evidence of Denial of IPR Institution Allowed in District Court Infringement Action
Claim Charts Are Not Enough – Petitioners Must Clearly Explain Relevant Disclosures in Prior Art
Failure to provide a detailed explanation of the relevance of prior art disclosures may foreclose any possibility of institution of IPR. 
A petition for IPR must align the evidence and arguments with the various limitations of the challenged claims. See 37 C.F.R. § 42.22(a)(2) (the “petition . . . must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.”
Continue Reading Claim Charts Are Not Enough – Petitioners Must Clearly Explain Relevant Disclosures in Prior Art
Recent Decisions Denying Stay of Litigation Highlight Importance of IPR Petition Timing
Defendants in litigation seeking to take advantage of IPR must file a petition within one year of the date of service of the complaint alleging patent infringement. Defendants may be tempted to delay filing the IPR petition to avoid revealing strategy early in the litigation proceeding. Delaying the filing, however, may risk the granting of a stay of the related litigation, as highlighted by four district court decisions¹ issued last week.
Continue Reading Recent Decisions Denying Stay of Litigation Highlight Importance of IPR Petition Timing
PTAB Denies Institution in Cepheid v. Roche: PCR Primers Found Not Inherently Anticipated
On June 11, 2015, the PTAB denied institution of Cepheid’s petition seeking inter partes review of Patent No. 5,643,723 directed to methods of detecting tuberculosis in humans (IPR2015-00255). To defeat institution, the patent owner successfully used its preliminary response to persuade the Board to (a) narrowly construe claim terms (despite the broadest-reasonable-construction standard), and (b) reject inherent anticipation and obviousness arguments offered by the petitioner’s expert witness.
Continue Reading PTAB Denies Institution in Cepheid v. Roche: PCR Primers Found Not Inherently Anticipated
Patent Dispute Reform Legislation Is Now Pending in Both Houses of Congress
The House of Representative’s Innovation Act, H.R. 9, was voted to the House floor for further consideration on June 11, by a 24-8 vote of its Judiciary Committee, after the Senate’s PATENT Act, S. 1137, was voted to the Senate floor on June 4 by a 16-4 vote of its Judiciary Committee. See prior entry, “PTAB Review Reform in Bill Approved by Senate Committee.” Both bills target abusive litigation tactics and post-grant proceedings, IPRs and PGRs.
Notably, amendments were introduced to H.R. 9 to prevent the types of IPRs filed by Kyle Bass-type hedge funds for monetary gain, and to permit the patent owner to support its preliminary response with new declaration evidence.
Continue Reading Patent Dispute Reform Legislation Is Now Pending in Both Houses of Congress
Federal Circuit Upholds PTAB’s Application of its Rules to Decide Motions to Amend
Update: Overruled in part byAqua Products, Inc. v. Matal.
Earlier this week, we wrote about the post-hearing briefing the Federal Circuit invited in Microsoft Corp. v. Proxyconn, Inc., Case Nos. 2014-1542, -1543, Dkt. 49 (Fed. Cir. Apr. 13, 2015), and the questions it posed regarding the PTAB’s administration of inter partes review. The court issued its decision in that case yesterday, answering some of the questions it posed and, for the first time, reversed a PTAB claim construction, vacated the PTAB’s decision of unpatentability, and remanded the IPR for further proceedings.
Continue Reading Federal Circuit Upholds PTAB’s Application of its Rules to Decide Motions to Amend
Pharma Patent Owner Attacks Bass IPR Petitions by Requesting Discovery of Real Parties-In-Interest
A picture can be worth a thousand words. This one illustrates the complex web of actual and potential real parties-in-interest (RPIs) that a pharmaceutical patent owner is attempting to pierce for two IPR petitions recently filed by Coalition For Affordable Drugs II—one of several similarly-named creations of hedge-fund manager Kyle Bass and his Hayman Credes Master Fund. It’s also an example of attacking IPR petitions by seeking discovery of RPIs.
Continue Reading Pharma Patent Owner Attacks Bass IPR Petitions by Requesting Discovery of Real Parties-In-Interest