In IPR2015-00208, Shinn Fu petitioned for IPR of USPN 6,681,897 owned by Tire Hanger. All five claims of the patent were drawn to methods of supporting vehicle wheels removed from a vehicle while on a service lift, wherein the supports would allow technicians to remove and replace the wheels without risking back injury by bending. By all accounts, Shinn Fu mounted a strong attack against all claims in the ‘897 patent, and the PTAB instituted review. Foregoing a dogged defense of the granted claims, Tire Hanger maintained a clear head and responded to the petition by filing a contingent motion to amend the claims rather than a Patent Owner Response.
Continue Reading PTAB Grants Motion to Amend Claims
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
One Post-AIA Claim Risks PGR For All Claims
In its seventh PGR institution, the PTAB recently decided for the first time that a patent asserting a pre-AIA effective filing date was eligible for post-grant review because it contained at least one claim that was only entitled to a post-AIA effective filing date. Although some claims were entitled to a pre-AIA effective filing date, PGR was instituted for all of the patent claims, on all five of the prior art grounds asserted by the petitioner.
Continue Reading One Post-AIA Claim Risks PGR For All Claims
PTO Requests Congress Change AIA Proceedings
As required by the Leahy-Smith America Invents Act, the PTO issued a report to Congress in September summarizing implementation of the AIA in the four years since the Act went into effect. The report proposes recommended changes to the law that the PTO would like to see enacted. A full copy of the report is available here.Continue Reading PTO Requests Congress Change AIA Proceedings
IPO Annual Meeting Panel Spars Over Fairness of Current IPR System
Welcome to all of you who are new readers joining us from the IPO Annual Meeting (#IPOAM15). I hope that your time in Chicago was enjoyable and that you will add us to your RSS feeds or bookmark the blog and return often. For those who were unable to attend, the Tuesday panel titled “Post Grant Proceedings at the USPTO” offered a wide-ranging, lively discussion of the current state of post-grant proceedings and proposed solutions to perceived weaknesses in the current system.
Continue Reading IPO Annual Meeting Panel Spars Over Fairness of Current IPR System
Petitioners Should Heed the PTAB’s Preference for Corroborated Witness Testimony
In its third PGR institution decision, the PTAB provided its first guidance regarding witness testimony to support a showing of prior public use or sale in PGRs. The decision is a cautionary tale that the PTAB strongly prefers corroboration of witness testimony, much like the corroboration required during interference proceedings. This is not a surprise, given that the PTAB and its predecessor also presided over interference proceedings. Thus, uncorroborated witness testimony, alone, will not be sufficient to show prior public use or sale. Netsirv v. Boxbee, Case PGR2015-00009, Paper No. 10 (August 4, 2015).
Continue Reading Petitioners Should Heed the PTAB’s Preference for Corroborated Witness Testimony
Who Benefits from the Federal Circuit’s SAP v. Versata Decision?
The Federal Circuit recently issued its opinion deciding SAP v. Versata, an appeal of the first PTAB final written decision in a post grant AIA trial. The court’s opinion (split on one issue) is significant because it decides a number of issues that will guide pending and future AIA trials, especially CBM proceedings. Below is a short summary of who—patent owners or petitioners—can claim victory in the court’s five major conclusions.
Continue Reading Who Benefits from the Federal Circuit’s SAP v. Versata Decision?
Put Away The Blunderbuss – Attention to Detail and Thoroughness Are Needed in Preparing an IPR Petition
Boehringer Ingelheim filed three petitions attacking patents generally drawn to methods of treating RA patients with rituximab. The decisions on two of those petitions, i.e., IPR2015-00415 and IPR2015-00417, have been addressed elsewhere. In IPR2015-00418, the PTAB declined to institute an IPR on the petition’s challenges to the lone claim of U.S. Patent No. 8,329,172, drawn to a method of treating low-grade non-Hodgkins lymphoma (LG-NHL) with CVP tri-chemical chemotherapy and rituximab maintenance therapy.
Continue Reading Put Away The Blunderbuss – Attention to Detail and Thoroughness Are Needed in Preparing an IPR Petition
Grinning Patentees Get A Mulligan
Filed concurrently with the petitions at issue in IPR2015-00417 and IPR2015-00418, Boehringer Ingelheim filed the petition at issue in IPR2015-00415 seeking review of U.S. Patent No. 7,820,161 owned by Genentech and Biogen Idec. The Board’s institution decision steadily whittled down Boehringer’s varied attacks on the patent. Ultimately, IPR was granted on 2 of the 36 obviousness grounds in the petition (additional grounds were summarily denied for failure to identify the ground with particularity), with the two surviving grounds implicating half of the 12 claims of the ‘161 patent.
Continue Reading Grinning Patentees Get A Mulligan
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