In 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
The Board’s Prerogative to Change its Mind May Doom Petition after Institution
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
PTAB Reminds Petitioners That Conclusions in Expert Declarations Must be Supported by Explanations
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
I Object! The PTAB is Leading Practitioners to Inefficient Depositions
Recently, 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
Federal Circuit Affirms PTAB Panel’s Authority to Institute IPRs and Issue Final Decision
The 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
Court Reviews Use of Broadest Reasonable Construction IPR Proceedings
On 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
District Court Denies Recovery of PTAB Costs in Non-Exceptional Case
On January 5, a district court denied defendant Westlake Services, LLC’s Motion for recovery of costs related to CBM petitions that invalidated certain of the patent claims asserted in the pending litigation and prompted plaintiff to voluntarily dismiss the district court case. Credit Acceptance Corp. v. Westlake Services, LLC, Case 13cv01523 (C.D. Cal. January 5, 2016). The court’s decision was governed by the language of the local rules identifying taxable costs. Because the local rules provided only recovery for “filing fees paid to the Clerk” and not filing fees paid to other entities, the request to recover the filing fees of $73,200 paid to the USPTO as part of the CBM Proceedings was denied.
Continue Reading District Court Denies Recovery of PTAB Costs in Non-Exceptional Case
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
PTAB Warns Again That Prosecution Declarations Without Depositions May Be Given Little or No Weight
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
Dissent: “Deferential review by the Federal Circuit falls short”
In Merck & CIE v. Gnosis S.P.A., Gnosis Bioresearch S.A., Gnosis U.S.A. Inc., Case No. 2014-1779 (Fed. Cir. Dec. 17, 2015), the Federal Circuit affirmed the Board’s decision that the contested claims were invalid for obviousness, determining that the Board’s factual findings were supported by substantial evidence, and agreeing with the Board’s conclusion of obviousness. However, in dissent, Judge Newman asserted that the Federal Circuit’s substantial evidence standard of review for the Board’s factual findings in AIA trial decisions is not appropriate under the AIA, and that based on a review without deference, the Board’s decision in this case should be reversed.
Continue Reading Dissent: “Deferential review by the Federal Circuit falls short”