Inter Partes Review Proceedings

News & Analysis as of

IP Newsflash - September 2014 #2

Airline Rewards Conversion Method Invalid Under Alice and Bilski - On September 2, 2014, Federal Circuit Judge William Bryson, sitting by designation in the Eastern District of Texas, ruled that two patents on a...more

Judge Griesa finds a patent prosecution bar does not preclude litigation counsel from assisting in an IPR, and would have reached...

Endo Pharmaceuticals Inc. et al. v. Teva Pharmaceuticals USA, Inc. et al. Case Number: 1:12-cv-08060 - Patentee Endo asked the court to rule that the protective orders in the patent infringement cases it filed...more

Arguments in Claim Charts Continue to Plague Petitions

In Google Inc. v. Visual Real Estate, Inc., IPR2014-01338, Paper 3 (September 2, 2014), the Board according the petition a filing date, but objected to the claim chart, because they contained arguments. ...more

Patent Filings, Institution Decisions and Dispositions for September 12, 2014

Institution Decisions In Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00736, Paper 10 (September 12, 2014), the Board instituted inter partes review of claims 1–7 of U.S. Patent No. 6,676,446....more

PGR Report -- The Attack of 35 U.S.C. § 112

Last week, on September 2, 2014, Accord Healthcare, Inc. ("Accord") filed what appears to be the second-ever Post-Grant Review ("PGR") (see Petition). This PGR was for U.S. Patent No. 8,598,219 ("the '219 Patent"), which is...more

Patent Filings, Institution Decisions, and Dispositions for September 11, 2014

Institution Decisions - In Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., IPR2014-00488, Paper 17 (September 11, 2014), the Board instituted inter partes review of claims 1–9 of U.S. Patent No. 7,769,605 (“all...more

Patent Filings on September 10, 2014

Motorola Mobility LLC v. Intellectual Ventures I LLC, IPR2014-00500, Paper 12 (September 10, 2014) instituted inter partes review of claims 1, 4–6, 8, 10, 13–15, 17, 21, 24–26, 28, 30, 33–35, 37, 39, and 40 of U.S. Patent No....more

Despite Lack of Familiarity with Specific Technology-at-Issue, Industry Expert Not Excluded

The Board continued its reluctance to exclude evidence in inter partes review proceedings in Primera Technology, Inc., v. Automatic Manufacturing Systems, Inc., Final Written Decision, IPR2013-00196 by denying a motion to...more

Inherency Is Tough to Prove—Even in IPR

ZTE Corp. v. ContentGuard Holdings, Inc. - In four final written decisions in inter partes review (IPR) challenges, the Patent Trial and Appeal Board (PTAB) concluded that the petitioner had not demonstrated by a...more

Emerging Impact of Inter Partes Review on Hatch Waxman Litigation – A Primer

Hatch-Waxman Litigation in a Nutshell - Hatch-Waxman litigation refers to pharmaceutical patent litigation between a brand drug manufacturer and a generic drug manufacturer under the Hatch-Waxman Act (“Act”). The Act...more

The Importance of the One-Year AIA Timeline

Rackspace US, Inc. v. Personal Web Techs., LLC - Addressing the one-year time frame for completing inter partes review (IPR) in the context of a stay request, the U.S. Patent and Trademark Office’s (PTO) Patent Trial...more

High Bar for Discovery Motions in IPR

Permobil Inc. v. Pridemobility Products Corp. - Addressing a patent owner's motion to compel a petitioner to produce documents concerning petitioner’s alleged copying in an inter partes review (IPR), the U.S. Patent...more

PTAB Dismisses Argument That Priority Date is a § 112 Issue Not Reviewable in an IPR

In a decision instituting inter partes review, the PTAB rejected a patent owner’s argument that the priority date of the patent is not reviewable in an IPR because it’s an issue under 35 U.S.C. § 112. ...more

Another Requirement to a Successful Motion to Amend Claims

It is getting hard to keep track of all the hoops and hurdles that need to be navigated in bringing a successful motion to amend in an inter partes review proceeding. Each new decision seemingly raises the bar further. The...more

Board Consolidates IPR’s of Two Different (But Related) Patents

In FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411, Paper 10 (September 5, 2014), the Board consolited two inter partes reviews directed to different but related patents. In IPR2014-00411 inter partes review was...more

Assignor Estoppel and Motion to Amend Claims Both Tough Sells in Inter Partes Review

Athena Automation Ltd. v. Husky Injection Molding Systems Ltd. - Addressing a patent owner’s request to dismiss an inter partes review (IPR) based on assignor estoppel and motion to amend the claims, the U. S. Patent...more

Patent Owner Bears Burden of Proving Proposed Claims Patentable

Harmonic, Inc. v. Avid Tech., Inc. - Addressing the patent owner’s burden of showing non-obviousness in an inter partes review (IPR), the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB, or...more

Late Addition of a Real-Party-in-Interest Allowed in Inter Partes Review

What if you come up short in naming all of the real-parties-in-interest to an inter partes review proceeding? Will the Board allow you to amend your petition? Four related IPR proceedings required the Board to address this...more

Patent Filings, Decisions, Dispositions and Rehearings on September 5, 2014

Institution Decisions - FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411 , Paper 8 (September 5, 2014), the Board instituted inter partes review of claims 1-58 (all of the claims) of U.S. Patent No. 8,426,813....more

Voluminous Declaration Leads to PTAB Denial of IPR Petition

August 28, 2014 – In a decision of interest, the PTAB denied institution of inter partes review due to the Petitioner’s excessive reliance on a voluminous supporting declaration...more

PTAB Draws Line on Admissibility of Declaration Evidence in IPR

In a break from the PTAB’s trend of admitting evidence and allowing objections to admissibility to go to the weight of the evidence, the Board excluded testimonial evidence concerning the contents of documents that were not...more

IPR Update – Prosecution Bars

Are proceedings before the Patent Trial and Appeals Board ("PTAB") more like prosecution or more like litigation? This might appear to be a purely academic question, except for one significant issue -- litigation prosecution...more

Patent Filings, Decisions, Dispositions and Rehearings on September 4, 2014

Institution Decisions - In Fiserv, Inc. v. DataTreasury Corporation, CBM2014-00087, Paper 6 (September 4, 2014), the Board instituted a covered business method review of claims 1, 2, 16, 18, 22, 25, 26, 29, 36, 38–42,...more

Stay of Reexamination Premature Until IPR Initiated

In GoerTek, Inc. v. Knowles Electronics, LLC, IPR2014-01009, Paper 7, (August 29, 2014), the Board denied the patent owner’s motion to stay...more

Post-grant review, continued: Inter partes, covered business methods

In my last post, I detailed some of the most common frustrations with patent litigation and how the U.S. Patent and Trademark Office offers alternative ways to challenge issued patents. I provided descriptions of two of the...more

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