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”
Now in Effect – PTAB’s New Motion to Amend Procedures
As recently noticed in the Federal Register, the Patent Trial and Appeal Board’s (PTAB or Board) new motion to amend (MTA) procedures are now in effect as a one-year pilot program.  In sum, the patent owner (PO) now has the option to ask for preliminary guidance from the Board about its substitute claims in a first MTA, and can file a revised motion—with new substitute claims—after either the petitioner’s opposition paper or, if guidance was requested, after the Board issues its preliminary guidance. The revised MTA then generates a further opposition opportunity for the petitioner on a tight, six-week turnaround. In this article, we highlight important details of the new procedures, discuss the impact to PTAB practice, and provide some practice pointers to consider when forming PTAB strategy under the new procedures. Continue reading “Now in Effect – PTAB’s New Motion to Amend Procedures”
Law of the Case? Not in our Forum! Continuing Trend of PTAB Aggressively Using Its Discretionary Powers to Deny Institution of IPRs
By statute, Congress gave the Patent Trial and Appeal Board (“PTAB”) broad discretionary power in deciding whether or not to institute an inter partes review (“IPR”) proceeding. Recently, the PTAB’s application of this discretionary authority to deny IPR petitions has continued to be aggressive in frequency and scope.
Several possible rationales for this continued upward trend exist including: (1) docket management, (2) concerns with protecting review process/patent owners from “abuse”, and (3) the SAS Institute Inc. v. Iancu decision. Continue reading “Law of the Case? Not in our Forum! Continuing Trend of PTAB Aggressively Using Its Discretionary Powers to Deny Institution of IPRs”
Forum Selection Clause in Patent License Found to Preclude Challenging Patents at the Patent Trial and Appeal Board
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”
Federal Circuit Reverses Course, Allows Appeal of Time-Bar Determination
This blog post was co-authored by Nicole Candelori and Justus Getty.
In a break from previous cases on the issue, the Federal Circuit in January issued an en banc decision holding that time-bar determinations in inter partes review (IPR) proceedings are appealable. Wi-Fi One, LLC vs. Broadcom Corporation Nos. 2015-1944, 2015-1945, 2015-1946, 2018 U.S. App. LEXIS 387 (Fed. Cir. Jan. 8, 2018). As a result, decisions of the Patent Trial and Appeal Board (“Board”) finding claims of several Wi-Fi One, LLC (“Wi-Fi One”) patents to be unpatentable were remanded to the Board for consideration of whether the petitioner, Broadcom Corporation (“Broadcom”), was time-barred from bringing the petitions.
Under 35 U.S.C. § 315(b), an IPR may not be instituted if a petition is filed more than one year after the petitioner, real party in interest, or privy of the petitioner is served with a complaint for patent infringement. In a 2015 decision, the Federal Circuit had held that a determination by the Board that a petitioner was time-barred was non-appealable. Achates Reference Publishing, Inc. v. Apple Inc., Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015). In that case, the Federal Circuit based its decision on the language of 35 U.S.C. § 314(d), which states that the Director’s determination “whether to institute an inter partes review under this section shall be final and nonappealable.” Continue reading “Federal Circuit Reverses Course, Allows Appeal of Time-Bar Determination”
Federal Circuit May Be Poised to Eliminate Issue Joinder
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”
PTAB Panel Estops Petitioner Under 315(e)(1)
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.
Continue reading “PTAB Panel Estops Petitioner Under 315(e)(1)”
Successful Motions to Amend Claims at the PTAB
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”
Extending Depositions in IPRs
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”
Federal Circuit to Review PTAB’s Amendment Practice
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”