In many cases brought before the Board, the Petitioner is defending against a real-party-in-interest challenge. In Acxiom v. Phoenix Licensing, LLC, CBM2015-00134 et seq., which involved a covered business method review, the Petitioner was attempting to show that it was a real party in interest, and it failed.
In Acxiom, the Petitioner claimed that it was a real-party-in-interest or privy to third parties that had been sued for infringement of the subject patents.… More
Petitioners challenging patents with known indefiniteness issues must carefully consider their options when filing an IPR, which may address only a claim’s patentability in view of the prior art under 35 U.S.C. § 102 or 103 — not under 35 U.S.C. § 112. The PTAB also requires an IPR petition to explain “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). Thus for claim terms to be construed under §112 ¶6,… More
We at Foley Hoag wish you a very happy Thanksgiving. And while you are gorging on turkey, cranberries and football, we remind you that patents still lurk on Thanksgiving Day! As a public service, you may wish to use (license?) this apparatus (U.S. Patent No. 9,016,190) to avoid any frying turkey explosions.
You may also wish to feast on a sweet potato named “Evangeline” (U.S.… More
Parties harness the PTAB’s authority to compel third parties only in rare situations.
The PTAB’s tight trial schedule allows no room for protracted discovery fights. That usually doesn’t matter, because parties rarely seek more than routine cross-examination of the opponent’s witnesses. And even when they seek other evidence, such as when investigating a real-party-in-interest issue, the evidence sought usually is in the control of a party to the proceeding.… More
Often overlooked due to its late timing and limited scope, the Motion for Observations provides a mechanism for introducing dispositive evidence when there’s little further the opponent can do about it.
The motion is limited to addressing cross-examination testimony of the opponent’s reply witnesses. There are normally at most two substantive Replies in a proceeding: the Petitioner’s Reply in support of the Petition,… More
The proper reliance on new evidence in a Reply is a common issue at the patent office. The Board in Volkswagen Group of America, Inc. v. Emerachem Holdings, LLC, IPR2014-01555 (Paper 36), recently authorized briefing on whether the Petitioner had properly relied on new evidence in its Reply:
New issues raised in a reply have been, and continue to be,… More
It was my honor to serve with Former Chief Administrative Patent Judge James Donald Smith at the PTAB. Please please join me in congratulating him on his appointment as Chief Intellectual Property Counsel at Ecolab. More
In Google Inc. v. Network-1 Technologies, Inc., CBM2015-00113, the Board instituted a Covered Business Method Review (CBM) of a computer software patent under § 103, but denied the petitioner’s request to review the patent under § 101, counter to the Board’s propensity to invalidate patents under § 101.
The patent at issue, U.S. Patent No.… More
PTAB litigation is less expensive and faster than the old ways.
An old joke about patent litigation among trial counsel that produces cringes when told to clients is that patent litigation is known as the “sport of kings.” That is because of the great expense of investigating, pleading, discovery, motion practice, expert discovery, pretrial preparation, and trial in a traditional patent case. Like that other sport of kings,… More
There’s been an issue bubbling under the surface of PTAB AIA proceedings: redundant grounds.
The issue boiled to prominence last week during oral argument at the Federal Circuit in Shaw Industries Group v. Automated Creel Systems, No. 2015-1116, which was an appeal of IPR2013-00132. Shaw, the Petitioner, had several of its grounds directed to certain claims denied in the interests of “efficiency” and then lost on the instituted grounds for those claims in the final decision.… More
315(b) bars are rare, but when applicable they kill petitions dead. Many 315(b) denials involve a straightforward application of the statute, i.e., the Petitioner had been served with a complaint alleging infringement of the challenged patent more than one year before the petition date. E.g. Accord Healthcare Inc. v. Eli Lily & Co., IPR2013-00356, Paper 13 (Kamholz, APJ). But I also wrote decisions denying petitions because 315(b) had been triggered in a more nuanced or unexpected way. … More
Unlike other types of post-grant challenges, in order to invoke a covered business method challenge, a petitioner must establish that it has been sued or threatened with a charge of infringement. A petitioner will have standing to file a petition for covered business method review if it has been sued already or if it “has been charged with infringement.” So exactly what does the phrase, “has been charged with infringement” mean?… More
The current wisdom is that if you are planning to enforce a patent, you should budget to defend the inevitable IPR or CBM. However, a review of the first three years of AIA proceedings suggests that the chance of a litigated patent being challenged in the PTAB is only around 20%. This analysis is from the perspective of individual patents, rather than the number of cases impacted, and so does not directly address multiple assertions of the same patent.… More
Walter Egbert and I co-wrote “Good, Fast, Cheap Certainty: The Case for Patent Office Litigation,” which was published recently in The New York Law Journal. The article examines the attractiveness of IPR as an alternative to traditional litigation due to its cost and speed advantages, as well as for the certainty it provides to business executives seeking to de-risk intellectual property issues. … More
Petitioners often view the Petition as an opening salvo in what they expect will be a back-and-forth process. In reality, the Petitioner loses control of the proceeding after the Petition is filed. Once trial is instituted, the Patent Owner calls the shots. For example:
