Inter Partes Review / IPR

Subscribe to Inter Partes Review / IPR via RSS

Pen poised to sign a declaration. Classic silver and gold ballpoint, shallow depth of field.

If you rely in an IPR on a declaration submitted during prosecution, the PTAB may give it little or no weight if your opponent cannot cross-examine the declarant.

In Praxair Distribution, Inc. v. INO Therapeutics LLC, the PTAB instituted inter partes review of U.S. Patent No. 8,846,112, directed to methods of providing nitric oxide gas for treating newborn children suffering from hypoxia.

In response, the Patent Owner relied not only on a supporting expert declaration, but also on three declarations submitted during prosecution of the ’112 patent.
Continue Reading PTAB Warns Again That Prosecution Declarations Without Depositions May Be Given Little or No Weight

stamp approved with red text over white background

As we’ve previously reported, patent owners have had little success arguing secondary considerations of non-obviousness during inter partes review. Underscoring the challenge that patent owners face, the Federal Circuit recently affirmed a PTAB obviousness determination despite finding that it had erred in its consideration of the patent owner’s evidence regarding objective indicia of non-obviousness.
Continue Reading Secondary Considerations Error Does Not Warrant Reversal

re-do written by a man over white background

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

Person writing on a clipboard form with a pen. Could be giving feedback or completing a surveyUpdate: Overruled in part by Aqua Products, Inc. v. Matal.  In a subsequent order, the court vacated the portions of the panel’s and the PTAB’s decisions concerning the patent owner’s motion to amend, and remanded the case to the PTAB for proceedings consistent with the Aqua Products decision.

In December 4, 2015, the Federal Circuit affirmed in a split opinion the Board’s final written decision in ScentAir Techs., Inc. v. Prolitec, Inc., IPR2013-00179, finding that the two claims of Prolitec’s U.S. Patent No. 7,712,683 (“’683 patent”) were unpatentable and denying Prolitec’s motion to amend.  Although several issues were addressed by the Board and Federal Circuit, perhaps of most interest is the court’s conclusion that the Board properly denied Prolitec’s motion to amend because Prolitic did not demonstrate patentability of the substitute claim over prior art of record during prosecution of the patent. 
Continue Reading Federal Circuit: Patent Owners Must Consider Prior Art from Prosecution History in Motion to Amend

In the first full reversal of a PTAB IPR decision, the Federal Circuit reversed the PTAB’s ruling in Straight Path IP Group, Inc. v. Sipnet EU S.R.O, on the basis that the PTAB incorrectly construed the claim term “is,” in claims directed to a computer program for online communications. 
Continue Reading Federal Circuit Reverses PTAB Decision Based on Incorrect Construction of “Is”

brown gavel and open book on a wooden table of the law in the courtroom

The Federal Circuit rejected a patentee’s appeal arguing that inter partes review is unconstitutional for violating Article III and the Seventh Amendment right to a jury trial.  MCM Portfolio LLC v. Hewlett-Packard Co., No. 2015-1091 (Fed. Cir. December 2, 2015).  The precedential decision affirms the PTAB’s authority to adjudicate the validity of issued patents.
Continue Reading CAFC Confirms Constitutionality of Inter Partes Review

In a decision last week, the Federal Circuit remanded for further consideration the Board’s final written decision concluding that the challenged claims of Verinata Health, Inc.’s U.S. Patent No. 8,318,430 were not obvious. See Ariosa Diagnostics v. Verinata Health,Inc., Case No. 2015-1215, 2015-1226 (Fed. Cir. Nov. 16, 2015). The Board’s conclusion was based, in part, on its decision to accord no weight to an aspect of declaration testimony the Petitioner (Ariosa) offered in support of its reply brief.
Continue Reading Federal Circuit Weighs in on Use of Evidence Cited in a Reply

Tug of WarIf you’re a patent owner faced with an expert declaration submitted by an IPR petitioner on reply, try to respond, and in multiple ways. Don’t just complain that the declaration should be excluded. This was the Federal Circuit’s recent message in Belden Inc. v. Berk-Tek LLC. 
Continue Reading Federal Circuit Tells Patent Owners That They Can’t Get It If They Don’t Ask For It

Outstretched ArmsTwo recent PTAB final written decisions highlight the benefits that the “broadest reasonable interpretation” standard for claim construction provides to Petitioners, as well as the difficulty Petitioners face in proving inherent anticipation.  The PTAB instituted two IPRs on the same patent: one on an anticipation ground, and another on an obviousness ground.  The Petitioner failed to prove anticipation, but prevailed on obviousness of all claims of the patent.
Continue Reading Broader is Better for the Petitioner, but Inherency is Intrinsically Difficult

Success PuzzleIn what appears to be only the second instance¹ to date, evidence of secondary considerations helped a Patent Owner defend against a Petitioner’s obviousness challenge during an IPR proceeding.  In Phigenix, Inc. v. Immunogen, Inc., the Board issued its final written decision and held that each of the eight challenged claims were not unpatentable, finding the Patent Owner “advances persuasive evidence” regarding the prior failure of others and the long-felt need in the industry. Phigenix, Inc. v. Immunogen, Inc., IPR2014-00676, Paper 39, (“Dec.”) (PTAB Oct. 27, 2015).
Continue Reading Secondary Considerations Finally Found to be Persuasive

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.

Learn more

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.