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Administrative Agency Civil Procedure Intellectual Property

Read need-to-know updates, commentary, and analysis on Administrative Agency issues written by leading professionals.

The Demise of Rule 36 Judgments in Federal Circuit Decisions Relating to IPRs

The Federal Circuit issued a fairly mundane decision yesterday in Boundary Solutions, Inc. v. Corelogic, Inc.(PTAB October 17, 2017), affirming the PTAB’s decision to cancel all challenged claims of two related patents. Over...more

The PTAB Authorizes Additional Motion To Amend Briefing in View of Aqua Products

by Knobbe Martens on

The Board authorized petitioner Kingston to file a Response to the patent owner’s Reply to petitioner’s Opposition to Motion to Amend, based on the Federal Circuit’s en banc holding that the burden to establish...more

It May Have Just Gotten a Little Easier to Amend Claims in an IPR

A Factionated Federal Circuit Holds that Petitioner has the Burden to Show Unpatenability - In Aqua Products, Inc., v. Matal, [2015-1177] (October 4, 2017), a plurality of the Federal Circuit en banc held that §316(e)...more

Expanded Panel Ratifies Post-Petition Disclaimer As Legitimate CBM Eligibility Strategy

by Jones Day on

An expanded panel at the PTAB has found that post-Petition claim cancellation is a legitimate strategy for patent owners to avoid CBM jurisdiction. In deciding petitioner’s Institution Decision Rehearing Request in Facebook,...more

In re Stepan Co. (Fed. Cir. 2017)

The Patent Trial and Appeal Board (PTAB) gets most of its attention (judicial and otherwise) regarding its decisions in inter partes review and covered business method proceedings. But the Board also has responsibility for...more

Asserted Claims Found Indefinite in Electrical Connectors Investigation

by Jones Day on

In a recently issued claim construction order, Chief Administrative Law Judge Bullock held that terms included in all asserted claims are indefinite. He accordingly found the asserted claims invalid, stayed the Investigation,...more

General Plastic Industrial Co. v. Canon Kabushiki Kaisha: PTAB Explains Factors Considers for Follow-On Petitions

On September 6, 2017, an expanded panel of the Patent Trial and Appeal Board issued an “informative” decision in General Plastic Industrial Co., Ltd, v. Canon Kabushiki Kaisha setting forth the Board’s framework for analyzing...more

Federal Circuit Overturns PTAB Fact-Finding Regarding Conception of Invention

by Jones Day on

In IPR2014-01198, the PTAB found that the patent owner failed to prove that the patented invention was conceived prior to the date of the prior art, and thus concluded that the patent was unpatentable. The Federal Circuit...more

Federal Circuit Places The Burden Of Persuasion For Motions To Amend In IPRs On Petitioners

by Knobbe Martens on

The Federal Circuit issued an en banc decision instructing the PTAB to assess patentability of amended claims in IPR proceedings without placing the burden of persuasion on the patent owner. Aqua Products, Inc. v. Matal, No....more

The PTAB Holds That Testimony Concerning Customer Statements and Their State of Mind Constitutes Hearsay

On September 22, 2017, the United States Patent Trial and Appeal Board (PTAB) issued a final written decision regarding claims directed to a switching regulator comprising a power switch and a control circuit. The PTAB found...more

AQUA PRODUCTS: The Federal Circuit Shifts The Burden of Proof On Amending Claims During An IPR From The Patent Owner To The...

The United States Court of Appeals for the Federal Circuit’s recent decision in Aqua Products Inc., v. Matal materially changes the burden of proof associated with the patentability of amended claims during an inter partes...more

ALJ Shaw: ITC is a Viable Forum for Enforcement of SEPs

The public version of ALJ Shaw’s Initial Determination (ID) in U.S. International Trade Commission (ITC) investigation Certain Magnetic Data Storage Tapes and Cartridges Containing the Same, Inv. No. 337-TA-1012 (1012...more

Petitioners Bear Burden Of Proving Claims Amended During IPR Unpatentable . . . For Now

by Jones Day on

In yesterday’s decision in Aqua Products, Inc. v. Matal, No. 15-1177 (Fed. Cir. Oct. 4, 2017) (en banc), the Federal Circuit issued five opinions, spanning 148 pages, addressing the question of who bears the burden of proving...more

CAFC Eases Amendment Process In IPR Proceedings

by Foley & Lardner LLP on

Today in Aqua Products, Inc. v. Matal, a fractured Court of Appeals for the Federal Circuit (CAFC) sitting en banc decided to flip the burden of persuasion onto petitioners in IPR proceedings to show that an amendment is not...more

Aqua Products, Inc. v. Matal: En Banc Decision on Motions to Amend Claims in AIA Post-Grant Proceedings Issues

by Brinks Gilson & Lione on

Those who were hoping for a clear standard to emerge as a result of the Federal Circuit’s grant of en banc review on the issue of burdens of proof for motions to amend in post-grant proceedings under the American Invents Act...more

Amending claims may be getting easier in post-grant proceedings, at least for now

by Thompson Coburn LLP on

In a highly fractured case, the full Federal Circuit today in Aqua Products, Inc. v. Matal, No. 2015-1177, found that the burden of persuasion rests on the petitioner to show that proposed claims in an inter partes review...more

Federal Circuit Concludes that PTAB Not Justified in Placing Burden of Persuasion on Patent Owners When They Seek to Amend Claims...

After several months of consideration, the U.S. Court of Appeals for the Federal Circuit sitting en banc in Aqua Products, Inc. v. Matal has concluded that, under the current rules, the U.S. Patent and Trademark Office is not...more

PTAB Disqualifies Reference for Failure to Show Public Accessibility

by Jones Day on

The PTAB’s recent final written decision denying a finding of unpatentability in ABS Global, Inc. v. Inguran, LLC, Case IPR2016-00927, Paper 33 (PTAB Oct. 2, 2017) highlights the importance of obtaining affidavit evidence to...more

Federal Circuit Upholds District Court Vacatur of Jury Verdict Under Doctrine of Equivalents Based Upon Ensnarement Defense

by Brinks Gilson & Lione on

In affirming a District Court vacatur of a jury verdict of infringement under the doctrine of equivalents, the Federal Circuit held that patent owner Dr. Jang failed to prove that his equivalents theory did not ensnare the...more

Timely Joinder Cannot Save Untimely IPR When Nothing to Join

by Jones Day on

In IPR2017-01054 and IPR2017-01055 (Fresenius Kabi USA, LLC v. Hospira Inc.), the PTAB denied institution of inter partes reviews of U.S. Patent Nos. 8,242,158 and 8,338,470, because Petitioner Fresenius filed the IPR...more

The Eastern District of Texas Again Broadly Applies IPR Estoppel and Finds a Joined Party in the IPR Is Also Subject to Estoppel

by Knobbe Martens on

A magistrate judge in the Eastern District of Texas recommended in Network-1 Technologies, Inc. v. Alcatel-Lucent USA, Inc. Case No. 6:11-cv-492 (E.D.Tex. September 25, 2017) that Hewlett-Packard (“HP”) should be estopped...more

Federal Circuit Schools USPTO On Broadest Reasonable Claim Construction

by Foley & Lardner LLP on

In recent decisions, the Federal Circuit has found error in the USPTO Patent Trial and Appeal Board’s approach to obviousness rejections, including its reliance on the doctrine of routine optimization without evidence of an...more

Aqua Products: Amendments in IPR Proceedings Come Roaring to the Forefront

Have you noticed the momentum of Federal Circuit decisions trending against the PTAB and petitioners? If not, today’s long-anticipated decision in the Aqua Products case will change your thinking. Albeit in a self-described...more

Respondents Denied Leave to Amend Answer to Complaint

by Jones Day on

In Certain Digital Cable and Satellite Products, Set-Top Boxes, Gateways and components Thereof; Inv. No. 337-TA-1049, ALJ McNamara recently denied a motion by Respondents to amend their answer to the complaint to add the...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

In Jang v. Boston Scientific, the Circuit takes on the doctrine of ensnarement, affirming a district court’s grant of JMOL based on the patentee’s inability to develop a hypothetical claim that covered the accused stent but...more

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