The Patent Trial and Appeal Board (PTAB) recently designated two opinions as precedential, which are two of the only three precedential opinions in America Invents Act (AIA) reviews up to today. The precedential status means that these opinions are binding precedents that the PTAB judges must follow in the future.
The first opinion, LG Electronics Inc. v. Mondis Tech Ltd. (IPR2015-00937, Sept. 17, 2015), is related to the one-year bar date for filing an inter partes review (IPR). Based on 35 U.S.C §315(b), an IPR is barred if it is filed more than one year after a petitioner is “served with a complaint alleging infringement of the patent” (emphasis added). The question is which complaint should be the basis for the one year deadline if several complaints are served. Continue reading PTAB’s Two Precedential Opinions and Impact of Previous Proceeding on AIA Reviews
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
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
A review of patent owners’ Oppositions to Joinder shows three common arguments against joining inter partes reviews: the lack of availability of issue joinder, the failure of joinder to simplify issues before the Board, and the inequity of allowing joinder. This post explores counter-arguments which can be used by a Petitioner when bringing a Motion for Joinder of IPRs
The joinder of inter partes reviews is left to the discretion of the Patent Trial and Appeals Board (“the Board”). 35 U.S.C. § 315(c) (“the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.). Continue reading Overcoming Common Arguments Against Joinder of IPRs