On April 8, 2016, the U.S. District Court for the District of Colorado overturned a jury’s finding that defendant’s infringement was willful, relying in part on the fact that the PTAB had elected to institute inter partes review of one of the asserted patents. We have previously reported on a number of District Court decisions that have addressed whether, and in what circumstances, the denial of an IPR petition may serve as evidence. The Colorado court’s decision appears to be the first to rely upon evidence that the PTAB instituted review to conclude, as a matter of law, that a defendant’s defenses were “objectively reasonable.”
Continue Reading The PTAB Vaccine: Institution of IPR Protects Against Willfulness Claim
It’s Complicated: PTAB Reinforces Notion That Petitioners Should Consider Expert Testimony in Complex Technology Areas
This Blog previously highlighted the risks involved when a petitioner does not submit an expert declaration with their petition. This risk may be lessened where the “the invention and prior art references are directed to relatively straightforward and easily understandable technology.” [Paper No. 41 at 17 n.6 of IPR2014-00169] (ruling in favor of petitioner despite its failure to present expert declaration until its Reply brief). However, a petitioner should strongly consider submitting an expert declaration to support their arguments in technology areas that are considered complex.
Continue Reading It’s Complicated: PTAB Reinforces Notion That Petitioners Should Consider Expert Testimony in Complex Technology Areas
Federal Circuit Gives a Geometry Lesson when Correcting the PTAB’s Claim Construction
In Pride Mobility Prods. Corp. v. Permobil, Inc., the Federal Circuit partially affirmed the PTAB’s decision cancelling claims in two Pride Mobility Products wheelchair patents. Disagreeing with the Board’s conclusions as to one of the canceled claims, the Federal Circuit concluded that the Board’s claim construction of “substantially planar” and “oriented perpendicular” did not make any “ordinary geometric sense.” In reversing the Board’s decision with respect to this single claim, the Federal Circuit gave the Board a much-needed refresher in geometry.
Continue Reading Federal Circuit Gives a Geometry Lesson when Correcting the PTAB’s Claim Construction
Without Estoppel, Are Redundant Grounds Now a Petitioner’s Friend?
The Federal Circuit recently confirmed the Board’s interpretation that § 315(e) estoppel does not take effect with respect to prior art that the Board declines to address as redundant. In two recent cases, Shaw Industries Group v. Automated Creel Sys., Nos. 15-1116, 15-1119, __ F.3d __, at*6-9 (Fed. Cir. Mar. 23, 2016) and HP, Inc. v. MPHJ Tech. Invs., No. 2015-1427, __ F.3d __, at *13 (Fed. Cir. Apr. 5, 2016) the court held that “the noninstituted grounds do not become a part of the IPR” and, thus, estoppel does not apply to those grounds in a subsequent court or Board proceeding.Continue Reading Without Estoppel, Are Redundant Grounds Now a Petitioner’s Friend?
Failure to Establish Published U.S. Application is Prior Art Dooms IPR under Dynamic Drinkware
The PTAB’s final written decision in Ariosa Diagnostics, Inc. v. Illumina, Inc., IPR2014-01093, should serve as a reminder to Petitioners challenging claims under 35 U.S.C. § 102(e) – take care to establish that your reference is prior art.
Continue Reading Failure to Establish Published U.S. Application is Prior Art Dooms IPR under Dynamic Drinkware
Failure To Identify The Difference Makes A Difference
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
A Second Bite at the Apple? Kyle Bass’s CFAD is Awarded IPR Institution of Follow-on Petitions
Remember when the PTAB denied institution of two IPR petitions filed by Kyle Bass’s Coalition for Affordable Drugs V LLC’s (CFAD) against Acorda Therapeutics, Inc. (Acorda)? Well, if at first you don’t succeed, try citing different prior art!
Continue Reading A Second Bite at the Apple? Kyle Bass’s CFAD is Awarded IPR Institution of Follow-on Petitions
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
PTAB Revises Claim Construction in Final Written Decision, But Still Finds Claims Invalid
On January 11, 2016, the PTAB issued a final written decision in ABS Global, Inc. et al. v. XY, LLC, IPR2014-01161, holding claims 1 and 3 of U.S Patent No. 7,195,920 invalid for obviousness. The IPR is part of a long-running dispute between the parties involving multiple issues and multiple patents, as reported previously.
Continue Reading PTAB Revises Claim Construction in Final Written Decision, But Still Finds Claims Invalid