Inter Partes Review Proceedings

News & Analysis as of

Fetal Diagnostics Patent Claims Fall in Inter Partes Review

Post grant inter partes review proceedings have lowered the hurdle to invalidate U.S. patents. The “broadest reasonable construction” of the claims and the lower burden to prove invalidity (by a preponderance of the evidence)...more

IPR Motions for Joinder are Common, But Not Automatic

Recent statistics show that motions for joinder are granted about 60% of the time. While parties can, therefore, expect a sympathetic ear regarding these motions, they are not always successful and it is worth noting the...more

Rationale from Denied Ground Used By PTAB In Final Written Decision

Lost a challenge ground in the Board’s Decision to Institute? The Board has given some hope that such denied grounds may still of use in an IPR proceeding in McClinton Energy Group, LLC v. Magnum Oil Tools International,...more

Patent Trial and Appeal Board Issues First IPR Decisions on Orange Book-Listed Patents

On December 9, 2014, the Patent Trial and Appeal Board (PTAB) issued final decisions in three inter partes review (IPR) proceedings filed by Amneal Pharmaceuticals challenging three patents listed in the Orange Book for...more

Mistakes to Avoid

Failure to include within the petition an exhibit list with the exhibit number and a brief description of each exhibit. 37 C.F.R. § 42.63(e). SpaceCo Business Solutions, Inc. v. Moscovitch, IPR2015-00135, Paper 6 (November...more

Hell Hath No Fury Like a Patentee Scorned

In SAP America, Inc. v. Arunacgalam, IPR2014-00413, Paper 23, and IPR2014-00414, Paper 21 (December 5, 2014), the Board sanctioned pro se patent owner for her unauthorized filings in which she makes “bald, unsubstantiated...more

Board Declines to Terminate Reexamination

In Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00419 and IPR2013-00424m Paper 48 (December 12, 2014), the patent owner sought permission from the Board to file a motion to terminate an ex parte...more

PTAB Update -- Hatch-Waxman-Watch Edition

The pharmaceutical industry has been closing watching the proceedings at the Patent Trial and Appeal Board ("PTAB" or "Board") to see if inter partes review ("IPR") will be a viable option for generic drug companies seeking...more

PR Obviousness Challenge of Design Patent Denied

Through two years of inter partes review practice, only 8 petitions were filed that were directed to design patents (out of 1773 total petitions). Given this limited number of petitions, lessons are going to be difficult to...more

Institution Decisions and Dispositions for December 11, 2014

Institution Decisions - In Fujitsu Semiconductor Limited v. ZOND, INC., IPR2014-00864, Paper 16, (December 11, 2014), the Board instituted inter partes review of claims 18–34 (all the challenged claims) of U.S. Patent...more

Independent Corroboration Required To Prove Conception

Microsoft Corp. v. SurfCast, Inc. - Addressing the requirements for antedating prior art, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) ruled all claims of a challenged patent unpatentable,...more

Play Nice in the Deposition Sandbox

Medtronic, Inc. v. Norred - In two separate orders on the conduct of the proceeding, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) came down on the parties for their inability to...more

IPR Patent Owner Succeeds in Antedating Key Prior Art

A witness credibility battle erupted in Dynamic Drinkware LLC v. National Graphics, Inc., IPR2013-00131, where the Board found that Patent Owner antedated a key prior art reference…despite the fact that the inventor testified...more

Institution Decisions for December 9, 2014

In HTC Corporation v. E-WATCH, Inc., IPR2014-00989, Paper 6 (December 9, 2014), the Board instituted inter partes review of claims 1–6, 8, 10, 11, 13–18, 21–29, and 31 (“all of the challenged claims”) of U.S. Patent No....more

Motion for Observation Must Follow Guidelines

Medtronic, Inc. v. NuVasive, Inc. - The U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) dismissed a patent owner’s improper motions for observation, agreeing with the petitioner that the...more

Patentee May Cancel but May Not Substitute Claims when Proposed Amended Claims Are Not Shown To Be Unobvious

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. - Addressing the burden of establishing the patentability of claim amendments in inter partes review (IPR), the U.S. Patent and Trademark Office Patent Trial and...more

And Another Thing

In Pacific Market International, LLC v. Ignite USA, LLC, IPR2014-00561, Paper 23, (December 2, 2014), the Board granted Petitioner’s motion to file a Supplemental Declaration of its expert, with additional reasons to combine...more

No Cross-Examination of Expert at the Close of Evidence

A.C. Dispensing Equipment Inc. v. Prince Castle LLC - Addressing the appropriate timing of cross-examination of expert witnesses in an inter partes review (IPR), the U.S. Patent and Trademark Office Patent Trial and...more

Contract Prohibiting Patent Challenges Does Not Preclude Standing to File IPR Petition

Ford Motor Co. v. Paice LLC - Addressing whether it has the authority to decide a contractual dispute in the context of a post issuance proceeding under the America Invents Act (AIA), the U.S. Patent and Trademark...more

Prior Art-Related Submissions That Go to the Merits Are Supplemental “Evidence,” Not Supplemental “Information”

FLIR Systems, Inc. v. Leak Surveys, Inc. - Addressing whether prior-art-related submissions by a petitioner in an inter partes review (IPR) proceeding are supplemental information under 37 C.F.R. 42.123(a) or...more

PTAB Update -- Amending Claims in an IPR Proceedings

Just what does it take to amend your claims during an IPR proceeding before the PTAB? Of course, the America Invents Act ("AIA") specifically provides that Patent Owners may file one motion to amend the claims. AIA, §...more

Pyrrhic Victory: IPR Petition Denied Because Claims Indefinite

Patent Owner won a Pyrrhic victory in Facebook v. TLI Communications, IPR2014-00566, wherein the Board denied the Petition, but for a reason that calls into question the future viability of the patent-in-suit. Namely, the...more

PTAB Expands Discovery for Inter Partes Review

GEA Process Engineering, Inc. v. Steuben Foods, Inc. - In a decision that has the potential to expand the scope of permissible discovery in inter partes reviews (IPRs) as well as other post-grant procedures under the...more

Not So “Routine Discovery” in AIA Proceedings

Atlanta Gas Light Company v. Bennett Regulators Guards, Inc.; Aker Biomarine AS, et al. v. Neptune Technologies and Bioressources Inc. - In two orders issued from the U.S. Patent and Trademark Office Patent Trial and...more

No Joinder Without Proof That Grounds Could Not Have Been Raised Previously

Reloaded Games, Inc. v. Parallel Networks LLC - Addressing the issue of joinder to an already instituted inter partes review (IPR), the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board)...more

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