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))
Relying on the priority date of a provisional patent application has been problematic for some Petitioners in Inter Partes Reviews. However, the Federal Circuit and the PTAB have recently issued decisions which provide guidance for using provisional patent applications in IPRs. Continue reading Provisional Applications as Prior Art in Inter Partes Reviews
Earlier this month the Federal Circuit reversed the Patent Trial and Appeal Board in an inter partes review decision for just the second time ever. Belden Inc. v. Berk-Tek LLC, Case No. 2014-1575 (Fed. Cir. Nov. 5, 2015). The court found that the PTAB did not invalidate enough claims of the challenged patent, resulting in yet another win for an IPR petitioner at the appellate level. Continue reading Federal Circuit Issues Second-Ever IPR Reversal, But Petitioner Still Wins
A recent decision at the PTAB highlights one of the difficulties faced by parties and practitioners before the Board: the potential for conflicting decisions in a forum where almost nothing is considered precedential.
Earlier this month an expanded panel re-visited the question of whether a Petitioner may join its own previously-instituted Petition for Inter Partes Review. Consistent with earlier decisions, this expanded panel concluded that so-called “issue joinder” (the same party joining new issues to an instituted petition) is permissible under 35 U.S.C. § 315(c). Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corp., IPR2015-00762 (PTAB October 5, 2015) (Paper 16). Continue reading Lack of Precedent at PTAB Can Lead to Conflicting Panel Decisions
One issue which we’ve been keeping an eye on is the Patent Trial and Appeal Board’s use of its discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review for petitions using “the same or substantially the same prior art or arguments previously [ ] presented to the Office.” (See our previous posts on the topic here and here.)
In an effort to better understand the Board’s use of § 325(d) we reviewed every institution decision issued by the Board in the last 15 months to see (1) whether a petition was opposed under this statutory provision and (2) whether institution was denied as a result. The results of this study, described in greater detail below, suggest that § 325(d) remains rarely used by the Board. That said, Petitioners still must account for this statutory provision by including different prior art or grounds of rejection in the petition, explaining those differences to the Board, and ensuring a proper petition is filed in the first instance to avoid a “second bite” rejection. Continue reading Board’s Discretion Under § 325(d) Remains Rarely Used
A three-member panel at the Patent Trial and Appeal Board (PTAB) has held that an expert declaration which explains the significance of Applicant Admitted Prior Art (AAPA) is not “prior art consisting of patents or printed publications” as required by 35 U.S.C. § 311(b). Kingbright Elec. Co. et al. v. Cree, Inc., IPR2015-00741, Paper 8 (PTAB Aug. 20, 2015). Accordingly, the panel denied institution of an inter partes review (IPR) petition that asserted seven grounds of invalidity with each ground relying at least in part on such a declaration and AAPA. This decision has not been designated informative or representative.
Continue reading IPR Challenge Based on Applicant Admitted Prior Art May Fail to Comply with Statutory Requirements
Last week the PTAB sought to clarify the somewhat controversial requirement that a patent owner must “persuade the Board that the [amended] claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner.” Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26, 7 (PTAB June 11, 2013). Some PTAB commentators had previously suggested that a patent owner should go so far as to submit a certified prior art search in order to demonstrate good faith compliance with the broad language of Idle Free. This requirement is one of many which makes it extremely difficult for a patent owner to successfully amend claims at the PTAB. (For our full discussion of a Motion to Amend Claims, click here). Continue reading PTAB Clarifies Meaning of “Prior Art … Known to the Patent Owner”
Earlier this month we explored the Board’s discretionary power under 35 U.S.C. § 325(d) to deny a petition premised on prior art or arguments previously considered by the U.S. Patent and Trademark Office. Shortly after that blog post, the Board issued another decision illustrating its use of § 325(d) to deny institution of a review where petitioners seek a so-called “second bite at the apple.”
In Travelocity.com LP v. Cronos Technologies, LLC, the Board denied a Petition for Covered Business Method Review “[i]n view of the substantially similar arguments presented and the same references applied in an earlier Petition.” CBM2015-00047, Paper 7, 2 (PTAB June 15, 2015). Continue reading PTAB Uses § 325(d) to Prevent a Second Bite
With the Patent Trial and Appeal Board recently granting a patent owner’s motion to amend claims for just the third time in its nearly three-year history, it seems like a good time to review the high bar the Board has set for such motions. See REG Synthetic Fuels, LLC v. Neste Oil OYJ, IPR2014-00192, Paper 48, 18-30 (PTAB June 5, 2015); Riverbed Tech. Inc. v. Silver Peak Sys. Inc., IPR2013-00402, Paper 35 (PTAB Dec. 30, 2014); Int’l Flavors & Fragrances Inc. v. United States, IPR2013-00124, Paper 12 (PTAB May 20, 2014).
Continue reading Mission (Nearly) Impossible: Motion to Amend Claims
One issue commonly raised by a patent owner in their Preliminary Response is the Board’s ability to deny institution because the petitioner’s proposed grounds are premised on prior art previously considered by the U.S. Patent and Trademark Office. The patent owner argues that the prior art at issue was previously raised during prosecution, in a reexamination, or in a prior petition for inter partes review of the challenged patent. Under 35 U.S.C. § 325(d), the Board has discretion to deny a petition where it is based on arguments and prior art already seen at the PTO:
“In determining whether to institute or order a proceeding … the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d).
Continue reading Patent Owner Challenges Under 35 U.S.C. § 325(d)