Rehearing an Institution Decision

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”

Collateral Estoppel in an IPR

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”

PTAB’s Two Precedential Opinions and Impact of Previous Proceeding on AIA Reviews

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”

Patent Owner Challenges Based on Common Ownership of Prior Art (§ 103(c)(1))

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))”

Federal Circuit Issues Second-Ever IPR Reversal, But Petitioner Still Wins

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”

Lack of Precedent at PTAB Can Lead to Conflicting Panel Decisions

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”

Board’s Discretion Under § 325(d) Remains Rarely Used

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”

IPR Challenge Based on Applicant Admitted Prior Art May Fail to Comply with Statutory Requirements

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”

PTAB Clarifies Meaning of “Prior Art … Known to the Patent Owner”

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””

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