Patent Trial and Appeal Board

News & Analysis as of

The Narrow Scope of Supplemental Discovery in an Inter Partes Review

Square, Inc., v. REM Holdings 3, LLC - Addressing issues of limited discovery and the requirements of a motion for supplemental discovery, the Patent Trial and Appeal Board (PTAB) denied supplemental discovery, finding...more

The PTAB Warns Attorney That Speaking Objections May Warrant Exclusion of Expert's Testimony

In an inter partes review Medtronic Inc. et al. v. Troy R. Norred, M.D., the Petitioner sought guidance from the Board regarding the Patent Owner's objections during the deposition of an expert appearing on behalf of the...more

Rare Grant (in Part) of an IPR Motion to Exclude

Motions to Exclude Evidence have been one of the features of inter partes review practice that have, to date, had a less significant effect than expected. Very few motions have been granted, largely because the Board...more

Know the Patent Specification Before Filing a Motion to Amend

Veeam Software Corp. v. Symantec Corp. - Addressing issues of claim construction and the requirements for a motion to amend, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (Board) ruled that the...more

An Overdue Discussion of the PTABs Grant of the First IPR Motion to Amend

It is hard to explain how this post, discussing the first ever granted Motion to Amend in an inter partes review, sat in “draft” mode for over 5 months. This is especially perplexing given the difficulty Patent Owners are...more

Post-Grant Insights: The Need for Seamless Coordination of District Court & PTAB Litigation [Video]

The key to a critical strategy is having a vision for how you are going to win the war, even if you lose individual battles. By adding the U.S. Patent Trial and Appeal Board (PTAB) judges to District Court to the jury, a...more

PTAB Denies Motion to Amend a Motion to Amend; Reason: Delay

Tandus Flooring, Inc. v. Interface, Inc. - In response to patent owner’s request to file a motion to amend a motion to amend made approximately one month before oral hearing, the U.S. Patent and Trademark Office’s...more

IP|Trend: Inter Partes Review: Is it Litigation or Something Else? [Video]

For two years we’ve seen the inter partes review process play out. What are the procedures like? Does it look like litigation or more like a foreign planet that IP litigators would not recognize? Attorneys Cyrus Morton and...more

PTAB Shows a Willingness to Intervene in Deposition Disputes

Experienced district court litigators are reluctant to “call the judge” when a dispute arises during a deposition. Judges do not want to take the time to deal with mundane discovery disputes and parties do not want to get on...more

Additional Discovery Relating to Real Party in Interest

In VMware, Inc. v. Good Technology Software, Inc., IPR2014-01324, Paper 11 (October 20, 2014), the Board allowed the patent owner to move for additional discovery regarding the real party in interest, one of the few topics...more

Movants Face a High Bar to Succeed on Motions to Amend

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. - In response to a patent owner’s motion to amend its claims in an inter partes review (IPR) petition, the U.S. Patent and Trademark Office’s (USPTO) Patent...more

PTAB Disqualifies Art as Being Non-Analogous to Claimed Invention

A limited number of cases, to date, have dealt with the issue of analogous prior art in an obviousness analysis. In Schott Gemtron Corp. v. SSW Holding Co., IPR2014-00358, the Board addressed this type of issue, finding in...more

Post-Grant Insights: The Preparation and Pace of the PTAB [Video]

The motions that are filed at the U.S. Patent Trial and Appeal Board all need to be authorized in advance. In other words, attorneys and their clients have to request a phone conference and there's a very active practice of...more

PTAB Designates Two Recent Decisions as Informative

Garmin Int’l, Inc., et al. v. Cuozzo Speed Technologies LLC; Idle Free Systems, Inc. v. Bergstrom, Inc. - The Patent Trial and Appeal Board (Board) recently designated as “informative” two decisions earlier released...more

Patent Owner Allowed to Request Discovery about Petitioner’s Testing

In Seoul Semiconductor Co., Ltd. v. Enplas Corporation, IPR2014-00605, Paper 13 (October 16, 2014), the Board authorized the Patent Owner to move for additional discovery about testing that Petitioner conducted. ...more

Motions to Amend Hard to Come By

Zodiac Pool Systems, Inc. v. Aqua Products, Inc. - In a Final Written Decision the Patent Trial and Appeal Board (PTAB) found all instituted claims unpatentable and denied patent owner’s motion to amend claims. Zodiac...more

Board Gives Refresher Course on Objecting to Evidence

In Mitsubishi Plastics, Inc. v. Celgard, LLC, IPR2014-00524, Paper 17, )October 15, 2014), the Board gave a refresher course on objecting to evidence supporting a Petition. ...more

PTAB Requires Additional Showing for Cross-Examination If Testimony Was Prepared for Another Proceeding

A recent order from the Patent Trial and Appeal Board (“Board”) in an inter partes review illustrates how the Board may handle situations where a party seeks to depose a declarant whose testimony was submitted through a...more

Cambridge Assoc., LLC v. Capital Dynamics (PTAB 2014); PNC Bank v. Secure Axcess, LLC (PTAB 2014)

As the fallout of the Supreme Court's Alice Corp. v. CLS Bank decision propagates through the USPTO and lower courts, many patent applications and patents directed to business methods are being rejected or struck down for...more

PTAB Offers Guidance Regarding Discovery in Inter Partes Reviews

Still confused about how much discovery you will be able to obtain in an IPR? Fear not, as two of the PTAB’s Administrative Patent Judges have weighed in with a primer on inter partes review discovery. ...more

Don’t Try to Barnstorm Proof of Printed Publication

The PTAB recently denied institution of inter partes review based on a petitioner’s failure to prove that a document was indeed a printed publication qualifying as prior art to the patent at issue. ...more

CBM Review Cannot Proceed if Petitioner Filed Civil Suit Challenging Patent’s Validity Prior to Filing Review Petition

SecureBuy LLC v. Cardinal Commerce Corp. - Addressing the circumstances under which a Covered Business Method (CBM) patent review may proceed, the U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeal...more

Rehearing Denied in Three Derivation Proceedings

In Catapult Innovations Pty Ltd. v. adidas AG, DER2014-00002, Paper 21, DER2014-00005, Paper 15 and DER2014-00006, Paper 15 (October 15, 2014), the Board denied rehearing of the Board’s decision denying institution of the...more

First Final CBM Decision Invalidates Patent Under § 101

U.S. Bancorp v. Retirement Capital Access Management Co. - In the first final written decision issued in a Covered Business Method (CBM) proceeding, the Patent Trial and Appeal Board (PTAB, the Board) ruled that it has...more

The PTAB finds that the petitioner did not show that a patent claiming internet-based transactions is not a technological...

In GSI Commerce Solutions, Inc. v. Lakshmi Arunachalam, GSI filed a petition seeking covered business method patent review of U.S. Patent No. 8,346,894 relating to "facilat[ing] real-time two-way transactions, as opposed to...more

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