Rather than resist preliminary-stage discovery, Petitioners instead should say “Bring it on!”
As I suggested in an earlier post, Patent Owners’ ability to introduce new declaration evidence with a preliminary response is unlikely to help them avoid trial. I doubt the Board will deny a Petitioner the relief requested on the untested evidence of a Patent Owner witness, however persuasive that evidence may appear.… More
Category Archives: CBM
It Stays Secret Only if it Doesn’t Matter: Confidentiality at the PTAB
The PTAB has rules for sealing evidence, but they are different from those in district court, like much else at the PTAB. Both parties in Google Inc. v. Summit 6 LLC, IPR2015-00806, got tripped up by them.
In district court, information designated by a party as confidential is treated as such by court until that designation is challenged by the opponent and ruled on by the judge. … More
The New PTAB Trial Rules are Here
Just announced today — the amended PTAB Rules of trial practice (click for a copy) will be published in the Federal Register on April 1, 2016 and take effect at the end of the month.
Changes include
- new testimonial evidence permitted in preliminary response
- Rule-11 type certification required
- Phillips-style claim construction for expiring patents
- word-count instead of page limit on major briefing
From the summary: “This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for IPR,… More
CBM Goes On, Even When the Qualifying Claim is Cancelled
A patent owner does not deprive a petitioner of standing in a covered business method (“CBM”) patent review by disclaiming the claim directed to a financial product or service.
In the final written decision for J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC, CBM2014-00157, Paper 40 (Jan. 12, 2016), the PTAB determined the Petitioner had standing on the basis that at least one claim was directed to a method for performing data processing used in the practice of a financial product or service.… More
Patent Owners Can Get the Last Word in IPR
PTAB 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
Have Your Cake and Indemnify It, Too
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
The PTAB’s Subpoena Power
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
Motion for Observations: A Late Game-Changer
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
Board Denies CBM Review Under § 101 for Software Patent
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
The Cost-Effectiveness of PTAB Proceedings
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
Ripeness and Mootness at the PTAB
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
How Many Litigated Patents are Actually Subject to PTAB Proceedings?
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
The Post Office Gets into the Alice Act
The Board has once again applied the Mayo/Alice test for patent eligibility, this time in the final written decision for United States Postal Service v. Return Mail Inc., CBM2014-00116, finding all six challenged claims unpatentable under 35 U.S.C. § 101. The patent bar as a whole, and this blog in particular, have noted how deadly § 101 has become post-Alice.… More
The remarkable effectiveness of Alice v CLS Bank challenges at the PTAB
The Supreme Court’s Alice v CLS Bank decision (2013) restricted categories of patentable subject matter in both the courts and in the Patent Office, including at the Patent Trial and Appeal Board. A look at the statistics at the PTAB shows just how effective a § 101 challenge can be.
The Supreme Court in Alice held that patents claiming “abstract ideas” are invalid and not eligible subject matter. … More
CBM Instituted For Healthcare-related Patent
In Symphony Health Solutions Corp. v. IMS Health Incorporated, CBM2015-00085, the Board instituted Covered Business Method patent review (CBM) for an IMS patent having claims in the healthcare field. The IMS patent “relates to a system and method for the gathering and analysis of health-care related data” and “techniques for de-identifying the individuals from such pharmaceutical data, in order to maintain privacy.”
In its Preliminary Response,… More