Monthly Archives: December 2015

Timing is Everything at the PTAB

The whole PTAB trial timeline is extremely compressed, but one deadline in particular stands out for its urgency: the Patent Owner’s objections to Petition evidence.  The Patent Owner has only 10 business days from institution to file objections to Petition evidence.  37 § 42.64(b)(1).  That includes anything from the preliminary stage of the proceeding, and it is the Patent Owner’s only opportunity to preserve its right to seek exclusion of the evidence in question.… More

Patent Owners Can Get the Last Word in IPR

iStock_000065890947_SmallPTAB judges continually impress me with their scrupulous fairness. I noticed it every day of my service as an administrative patent judge and every day since. Here’s a great example of that careful attention.

The party with the burden of proof argues last, right? Well, mostly right. In IPR’s (and PGR’s and CBM’s), the Petitioner bears the ultimate burden to prove a proposition of unpatentability by a preponderance of the evidence.… More

How the FRCP changes affect Patent Litigation

iStock_000027201123_SmallSignificant amendments to the Federal Rules of Civil Procedure became effective on December 1, 2015 and include an important change to patent infringement pleading practice and the most notable revisions to the civil discovery rules in years. All attorneys, and particularly patent litigators, should become familiar with these amendments, which apply to all cases pending as of December 1.

Read Foley Hoag’s Intellectual Property Alert for more details.… More

To Exclude or Not to Exclude?

To be or not to be.There are several reasons why the Board rarely grants motions to exclude evidence:

  1. Weight, not admissibility.  The opponent’s objections to the evidence usually go more to the weight to be accorded the evidence (i.e., how much it contributes to or detracts from a preponderance), not admissibility (i.e., whether a provision of the Federal Rules of Evidence bars its consideration).
  2. Expert judges.  …
  3. More

How Patent Owners Should Use Expert Witnesses

Don’t go to the trouble of putting on expert testimony without giving the PTAB basis to rely on it.

Patent Owners use expert witnesses in PTAB proceedings for one basic purpose: to undermine the Petitioner’s case for unpatentability.  Expert witnesses can do this in two ways: by refuting the Petitioner’s evidence, and by introducing new evidence that dilutes the Petitioner’s evidence for unpatentability to less than a preponderance. … More

The PTAB Is Still in Business

The Federal Circuit just announced in MCM Portfolio LLC v. Hewlett Packard, No. 2015-1091, that the IPR process is not unconstitutional.  Appellants argued that IPRs should be held by an Article III court, and the court rejected this argument.  The court noted that Supreme Court precedent generally allows Congress to devise expert and inexpensive ways through administrative adjudication to deal with a class of questions of fact.  … More