Inter Partes Review / IPR

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Balance ScaleUpdate: 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

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In Synopsys, Inc. v. Mentor Graphics Corporation, Appeal Nos. 2014-1516, 2015-1530 (Fed. Cir. Feb. 10, 2016), the Federal Circuit affirmed the PTAB’s judgment that two of the challenged claims were not invalid as anticipated.  The court also held that (1) the final order of the Board need not address every claim raised in the petition for review, and (2) the Board did not err in denying Mentor’s motion to amend. This post focuses on the court’s holding that the Board need not address every claim raised in the petition for review.  We further explore the Board’s denial of Mentor’s motion here.
Continue Reading Federal Circuit Confirms Board Can “Pick and Choose” Among Claims in Its Decision to Institute IPR

Watch OutIn Hewlett-Packard Co. v. U.S. Philips Corp., et al., IPR2015-01505, Paper 16 (Jan. 19, 2016), HP’s Petition  asserted that the claims of the patent at issue, US 5,777,992 relating to MPEG audio, were invalid in view of three references, each allegedly a “printed publication”: (1) Chambers; (2) MPEG 89-051; and, (3) MASCAM 1988. In its (optional) response to the Petition the Patent Owner asserted that HP failed to establish that any of these references qualified as a “printed publication.” Indeed, HP did fail – lulled into a sense of security that turned out to be unwarranted – and as a result the PTAB declined to institute an inter partes review of any of the challenged claims.1 This presents another PTAB practice teachable moment.
Continue Reading Petitioner’s Fatal Failure to Dot the “i”s in Allegedly Published Prior Art

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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

Bumble beeIn a recent order by the magistrate judge in Jazz Pharmaceuticals, Inc. v. Amneal Pharmaceuticals, LLC (NJD, Jan. 22, 2016), defendants Amneal Pharmaceuticals and Par Pharmaceuticals were reprimanded and threatened with sanctions and monetary fines for trying to use confidential information from the litigation to move for additional discovery in a related IPR proceedings.  The judge ruled this behavior violated a Discovery Confidentiality Order (DCO) in place in the litigation.  
Continue Reading Cross-Pollination of Information From Litigation to IPR Can Lead to Trouble for Parties

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On January 19, 2016, the PTAB denied Coalition for Affordable Drugs V LLC’s (CFAD) request for rehearing following the Board’s decision denying institution of IPR.  In IPR2015-01086, CFAD filed a petition requesting an IPR of claims 1–13 in Biogen International GmbH’s (Biogen) U.S. Patent No. 8,759,393.  The Board denied the petition and CFAD filed a request for rehearing on the (same) grounds of anticipation and obviousness.  As discussed below, the denial of the rehearing highlights the importance of supporting all conclusions in an expert declaration with reasoned explanations.
Continue Reading PTAB Reminds Petitioners That Conclusions in Expert Declarations Must be Supported by Explanations

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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

X OutRecently, 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

Split DecisionsThe AIA explicitly bestows the USPTO Director with the authority to institute IPRs and the PTAB with the authority to decide the ultimate question of patent validity.  The Director delegated the authority to institute IPRs to the Board, but is it proper to assign the decision to the same APJs that render a final decision?  A split panel at the Federal Circuit held that neither the AIA nor the Constitution precludes the same PTAB panel from rendering both institution and final decisions.  Ethicon Endo-Surgery, Inc. v. Coviden LP, No. 2014-1771 (Fed. Cir. 2016).
Continue Reading Federal Circuit Affirms PTAB Panel’s Authority to Institute IPRs and Issue Final Decision

Golden GooseOn January 15, 2016, the United States Supreme Court agreed to consider whether it is appropriate to give claims challenged in inter partes  review their “broadest reasonable construction.”  See Cuozzo Speed Tech., LLC v. Lee.  Given the Federal Circuit’s dismal recent track record when the Supreme Court has injected itself into disputed patent issues, practitioners are likely girding for a tectonic shift in IPR proceedings.  For those beleaguered by litigation from non-practicing entities, they may be justified in fearing that coveted IPR proceedings will become less useful as a bulwark against such cases.     
Continue Reading Court Reviews Use of Broadest Reasonable Construction IPR Proceedings

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.