The Patent Trial and Appeal Board has designated as precedential a decision holding that the Board may consider § 101 when evaluating the patentability of a patent owner’s proposed substitute claims in a motion to amend. The decision clarifies the impact of the Federal Circuit’s Aqua Products decision on the issue of subject matter eligibility of substitute claims. Continue reading PTAB Can Consider § 101 When Reviewing Amended Claims
On March 23, 2018, the U.S. District Court for the Northern District of California ordered a patent licensee to withdraw petitions to the Patent Trial and Appeal Board (“PTAB”) seeking to invalidate a licensor’s patents. The Court held that the forum selection clause of the patent license between the parties – which stipulated that “the parties agree…that disputes shall be litigated before the courts in San Francisco County or Orange County, California” – extinguished the patent licensee’s right to bring challenges against the licensed patents in the PTAB located in Alexandria, Virginia. Continue reading Forum Selection Clause in Patent License Found to Preclude Challenging Patents at the Patent Trial and Appeal Board
A Federal Circuit panel may toss so-called “issue joinder” from inter partes review proceedings after hearing oral arguments last month in Nidec Motor Corporation v. Zhongshan Broad Ocean Company. Issue joinder allows the same party to raise new issues in separate proceedings and then join them. Continue reading Federal Circuit May Be Poised to Eliminate Issue Joinder
A panel of judges at the Patent Trial and Appeal Board (“the Board”) recently estopped a Petitioner from joining a petition for inter partes review under 35 U.S.C. § 315(e)(1). The panel’s order denying institution and joinder is notable for its interpretation of the Federal Circuit’s decision in Shaw Industries Group v. Automated Creel Systems, Inc. 817 F.3d 1293 (Fed. Cir. 2016). The panel’s interpretation is markedly different from an earlier application of that case by Judge Robinson of the U.S. District Court for the District of Delaware.
In April, the USPTO released the results of a study on claim amendments in AIA proceedings. The study showed that of 118 Motions to Amend Claims filed at the PTAB, just six had been granted. The abysmal success rate of patent owners seeking to amend claims (just 5% by the PTO’s own numbers) has been a source of strong criticism of the PTAB.
For patent owners searching for a successful amendment strategy, we’ve collected the allowed claim amendments from those six successful motions to amend at the PTAB, which are presented below: Continue reading Successful Motions to Amend Claims at the PTAB
In the vast majority of depositions taken pursuant to an inter partes review, the deponent will have previously provided direct testimony via a declaration. The typical IPR deposition is therefore an opportunity for an opposing party to cross examine the witness, and the PTAB has set the standard duration of cross examination at seven hours. 37 C.F.R. 42.53(c)(2) (further providing four hours for re-direct examination and two hours for re-cross examination).
The seven-hour cross examination rule does contemplate extending the duration of a deposition, as may be “stipulated by the parties or ordered by the Board.” Id. Where each party retains an expert fact witness in an IPR, it can be mutually beneficial for the parties to stipulate to extended depositions. In one extreme case, the parties agreed to stipulated extensions such that the deposition of a single witness extended over a five-day period. Continue reading Extending Depositions in IPRs
Earlier this month the Federal Circuit granted en banc review of the PTAB’s process for reviewing Motions to Amend Claims in AIA proceedings. In the case In re Aqua Products, the patent owner argues that it met the statutory requirements for making a claim amendment but the PTAB failed to enter the amendment based on a erroneous interpretation of the statute which results in additional, onerous requirements being levied on a patent owner. Continue reading Federal Circuit to Review PTAB’s Amendment Practice
The Supreme Court recently affirmed that a decision by the PTAB regarding institution of an inter partes review is “final and nonappealable.” Cuozzo Speed Tech. v. Lee, No. 15-466, slip op. at 7 (U.S. June 20, 2016); see 35 U.S.C. §314(d). Without the ability to appeal an institution decision, a dissatisfied party is often left to file a request for rehearing with the Board. 37 C.F.R. § 42.71(d). Continue reading Rehearing an Institution Decision
When a patent or patent family is subject to multiple validity challenges, a petitioner in an inter partes review may seek to assert collateral estoppel to preclude relitigation of issues decided in a previous proceeding. Collateral estoppel, which is also called issue preclusion, is appropriate where: “(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against whom issue preclusion is asserted] had a full and fair opportunity to litigate the issue in the first action.” In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994). Collateral estoppel is “premised on principles of fairness,” which leaves considerable latitude to the PTAB in deciding whether to apply the doctrine. Continue reading Collateral Estoppel in an IPR
In a previous post, we discussed the “shifting burdens” framework outlined by the Federal Circuit in Dynamic Drinkware, LLC v. National Graphics, Inc., for demonstrating a prior art reference’s entitlement to a provisional priority date. (See our post here. See also Dynamic Drinkware, 800 F.3d 1375, 1378 (Fed. Cir. 2015)).
In a pair of recent decisions, the PTAB has adopted the shifting burdens framework to new issues, such as whether a reference is precluded from use in an obviousness rejection under the common ownership exception of 35 U.S.C. § 103(c)(1). See, e.g., Global Tel*Link Corp. v. Securus Techs., Inc., IPR2014-00825, Paper 36 (P.T.A.B. Dec. 2, 2015); Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC, IPR2014-00552, Paper 79 (P.T.A.B. Nov. 30, 2015). Continue reading Patent Owner Challenges Based on Common Ownership of Prior Art (§ 103(c)(1))