Category Archives: Inter partes review

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Ticket to Join the Party: Challenges with Raising New Arguments When Attempting to Join Inter Partes Review

A party may join an already filed inter partes review (IPR) petition under 35 U.S.C. § 315(c). This may be done to avoid the one-year statutory bar or to ensure that the petitioner can maintain the IPR if the parties to the previously filed IPR settle. But there is no right to joinder; 35 U.S.C. … Continue Reading

Proving Public Accessibility of Printed Publications at the PTAB

Recent PTAB decisions have shown that a number of hurdles need to be cleared to successfully rely on printed publications as prior art in IPR, CBM, or PGR challenges. These challenges include proving that the reference was publicly accessible, that the copy relied on is authentic, and the publication date. This post focuses on public … Continue Reading

Arctic Cat Chills Polaris’ Secondary Considerations

In Arctic Cat, Inc. v. Polaris Industries, Inc. (IPR2015-01789), the Board again examined secondary considerations of non-obviousness but found them to be unpersuasive because “the claims capture features largely well-known in the art” and the commercial embodiments “[include] important unclaimed features.” In stark contrast to the simple bottle cap in World Bottling Cap v. Crown … Continue Reading

PTAB Brews a Bitter Cup for Keurig (IPR2016-1390 et al.)

Keurig Green Mountain, vendor of the well-known Keurig brand of single-cup coffee brewers, brought five separate IPR challenges to four beverage brewing system patents owned by Touch Coffee and Beverages. In early January, the PTAB refused to institute review of most of the claims, concluding that Keurig failed to provide a rationale for the allegedly … Continue Reading

En Banc Panel to Hear IPR Time-Bar Appeal

On petition for rehearing, an en banc Federal Circuit recently agreed to answer whether the statutory time-bar for instituting inter partes review (IPR) proceedings under 35 U.S.C. § 315(b) is subject to judicial review. In accordance with the IPR statute, “[t]he determination by the Director whether to institute an [IPR] … shall be final and … Continue Reading

The PTAB’s Determination of Whether Assignor Estoppel Precludes IPR Institution Cannot Be Appealed

The Federal Circuit recently added the PTAB’s decision on whether assignor estoppel precludes institution of an inter partes review (IPR) petition to the growing list of nonreviewable issues in an IPR. Husky Injection Molding Systems Ltd. v. Athena Automation Ltd. was an appeal from the PTAB’s final decision finding claims 1, 4-16, 18, and 20-22 … Continue Reading

Federal Circuit Clarifies That Decisions on Time Bar Cannot Be Appealed

In a recent decision, the Federal Circuit affirmed that PTAB Board determinations regarding real parties in interest and privity cannot be appealed. Note to practitioners: Don’t waste your time arguing that a petition was time-barred under Section 315(b) once denied by the Board. The patentee in WiFi One, LLC v. Broadcom argued that Broadcom was … Continue Reading

Motions to Exclude Rarely Successful at PTAB

In the several years of post-grant practice, the Patent Trials and Appeals Board has been reluctant to grant Motions to Exclude Evidence. Instead, the Board has made clear that it strongly favors maintaining a complete record, noting that “there is a strong public policy for making all information filed in a nonjury, quasi-judicial administrative proceeding … Continue Reading

The PTAB’s Claim Constructions Will Likely Have Minimal Impact in the District Court

It is an understatement that claim construction is important to the ultimate merits of non-infringement and invalidity. In many district courts, a claim construction decision is not issued until the parties are well into fact discovery, which could be a year or so from filing. With inter partes review (IPR), however, a decision construing claim … Continue Reading

Federal Circuit Rejects PTAB Burden-Shifting Framework

The USPTO has long applied a burden-shifting framework during prosecution of U.S. patent applications. Under that framework, the USPTO examiner bears an initial burden of providing a prima facie case of obviousness. After that, the burden shifts to the applicant, who may submit additional evidence of non-obviousness. This approach is said to further the goals … Continue Reading

As PTAB Hands Down First PGR Decision, the Overall Impact of PGR Practice Is Still an Unknown

Since the implementation of AIA trials in September of 2012, inter partes review (IPR) has increasingly become a popular procedure for invalidating patents, often supplementing district court litigation. As of June 2016, over 4,600 IPR petitions have been filed, compared to 30 post grant review (PGR) petitions. Unlike IPR, only AIA patents are eligible for … Continue Reading

Federal Circuit Clarifies Scope of Evidence Used In IPRs

As the America Invents Act (“AIA”) approaches its fifth birthday, the contours of one of its popular procedures, Inter Partes Review (“IPR”), continue to take form.  In Genzyme Therapeutics Products Limited Partnership v. Biomarin Pharmaceutical Inc., the Federal Circuit (“CAFC”) clarified what evidence the Board can consider in its final decisions. The Genzyme patents relate … Continue Reading

A Trial Lawyer’s Observations of a PTAB Proceeding

I have been a trial lawyer for 40 years, trying jury and bench trials in federal courts throughout the United States, in many state courts, before the International Trade Commission and other regulatory and arbitral entities – and even before the Iran U.S. Claims Tribunal. I recently completed my first trial at the United States … Continue Reading

RPI Dos and Don’ts

Failure to properly name all Real Parties-in-Interest (RPI), as required by 35 U.S.C. § 312(a)(2), can be fatal to an IPR. The PTAB may review and dismiss an IPR at any time during the proceedings for failure to properly name all RPIs. Thus, a Petitioner must take caution. As explained in the PTAB Trial Practice … Continue Reading

Q1 Patent statistics – NPEs are the most prevalent patent litigation filers

Unified Patents recently released its quarterly patent litigation statistics. This article summarizes these statistics and supplements with the USPTO’s data as applicable. The statistics are interesting because they show that non-practicing entities (NPEs) are major filers of patent litigations, both in district courts and in front of the Patent Trial and Appeals Board (PTAB). The … Continue Reading

Federal Circuit: Section 315(e) Estoppel Does Not Apply to Grounds Denied as Redundant

Defendants in district court litigation are well aware that filing an IPR carries with it a substantial risk—the filing party (and any parties-in-interest) can be estopped from making critical invalidity arguments in their district court proceedings. More specifically, under 35 U.S.C. 315(e), parties that receive a final decision in an IPR are estopped from bringing … Continue Reading

Distilling the Differences Between IPR and PGR

The Leahy-Smith America Invents Act created new procedures for challenging the validity of patents at the Patent Trial and Appeal Board (PTAB), an administrative law body of the U.S. Patent and Trademark Office (USPTO). The new trial-like procedures, often referred to as “AIA Trials” include Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business … Continue Reading

PTAB Continues to Evolve the Section 325(d)-fense

In two separate decisions in the past month, the PTAB denied institution of an IPR Petition based on 35 U.S.C. § 325(d). That statute provides (emphasis added): (d) Multiple Proceedings.— Notwithstanding sections 135(a), 251, and 252, and chapter 30, during the pendency of any post-grant review under this chapter, if another proceeding or matter involving the … Continue Reading