Category Archives: IPR

Petitioners Should Prefer to Lose Early

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

Inadmissible Doesn’t Mean Confidential at the PTAB

Although the focus of IPR and other PTAB trials is on the validity of patents, parties cannot reflexively rely on the safeguards of FRE 408 for licensing and settlement negotiations that apply in Federal Court. In Palo Alto Networks, Inc. v. FinJan, Inc., (Cases IPR2016-00149 and IPR2016-00150, Paper 12), the Board denied a motion to seal, stressing that “[t]here is a presumption that the record of our proceedings,… More

ITC, District Court, PTAB (Oh, My): Managing Triple-Header Patent Litigation

A district court litigation has lots of moving parts all by itself. But add in an IPR and then an ITC Section 337 investigation, and it may become more than the parties can handle. But will the parties agree to stay any of the proceedings? And even if they agree, would any of the tribunals oblige?

The answer, it seems, is that when the parties don’t agree,… More

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

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

We Never Make Misteaks

The PTAB does sometimes make mistakes and isn’t shy about owning up to them. As long as a rehearing request identifies a dispositive misunderstanding or omission by the Board, it stands a good chance of success.

Boston Scientific Corp. v. UAB (IPR2015-00918, Paper 14) is a case in point. The Petitioner had argued that the patent was vulnerable to intervening art due to an invalid priority claim.… More

A 325(d) Denial on New Art: What the What?

iStock_000024744727_SmallSo a Petitioner files an IPR with new art combinations that weren’t considered during prosecution, including some new references that weren’t applied by the Examiner.  Sounds like a good start to a Petition, right?  Think again.  A recent IPR got denied under 35 U.S.C. § 325(d) for doing that.

Now stop and let that sink in.  An IPR was denied under 325(d) despite citing new art and combinations.… More

Giving the Petition a Bad Haircut

The IPR Petition page limit is easy to remember—60 pages, right? Not exactly. In Shenzhen Huiding Tech. Co. Ltd. v. Synaptics Inc., IPR2015-01739 (Paper 8), the PTAB stopped reading the Petition at page 50 and denied all the challenges laid out in the final 10 pages. Talk about a bad haircut!

How did this happen? The Patent Owner used its Preliminary Response to point out that the Petitioner had effectively blown through the page limit by incorporating other documents along the way.… More

Answering “I Don’t Know” To a Pivotal Question on Cross

Bald businessman wearing glasses with hand on chin making funny face against gray background

In Silicon Laboratories v. Cresta (IPR2014-00809), both parties relied heavily upon expert testimony to construe key claim terms.  Petitioner Silicon Laboratories proffered an expert Declaration with their Petition and second expert Declaration (same expert) with their Reply.  The Patent Owner, Cresta Technology, filed an expert Declaration with their Response.  Both experts were deposed and the deposition transcripts were submitted as evidence.… More

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

What’s In a Claim? IPR Can Be Denied For Indefiniteness

ptab-blogPetitioners 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

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

Antique hourglass, black sand, textured background. Right of image, blank space on left, landscape, top half almost empty.

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 Cost-Effectiveness of PTAB Proceedings

image001PTAB 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

Is the PTAB Blindly Throwing Darts?

iStock_000000511731_SmallThere’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 Lurk in Unlikely Places

iStock_000004696356_Small315(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

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 Patent Owner Calls the Shots in Trial

The Patent Owner calls the shotsPetitioners 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:

  • The Patent Owner decides what new witness testimony to introduce and thereby limits the scope of the Petitioner’s discovery.
  • The Patent Owner decides what issues to raise in the Response and thereby limits the scope of the Petitioner’s Reply.…
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The IPR Hearing Really Does Matter

PTAB Hearing RoomWhen I was an Adminsitrative Patent Judge, I expected to go into an IPR trial hearing with a pretty good idea of who was going to win.  I was surpised to find that rarely to be the case.  I was far more open to persuasion at that point than I had expected to be.

Some commentators have likened PTAB trial hearings to oral argument at the Federal Circuit.  … More

The Death Valley for Petitioners in IPR

view from death valley at dante's point

A Petitioner faces great peril if it gets an IPR instituted but then doesn’t prevail in the final written decision. That is, the Petitioner puts in enough to get a trial but not enough to win it. A Petitioner thus caught finds itself bound even more inextricably to the patent it sought to free itself from.

How can this happen? After all, if there was enough in the Petition to persuade the PTAB that a trial is justified,… More

Petitioner’s Biggest Problem: Challenge Depth Mismatch

Taking out the competition, business concept.

With only sixty pages (Editor’s update: 14,000 words) in which to present a thorough treatment of every issue, the Petitioner must balance depth of analysis against the number of challenges.  The fear of estoppel often drives Petitioners to present many challenges with a shallow analysis that is supported by a perfunctory expert declaration rehashing the Petition.  The Board often institutes on only a handful of such challenges,… More

IPR filing receipts can take a month to issue

In the early days of AIA trials, the PTAB was able to issue filing notices less than a week after petition filing.  But paralegal resources now are stretched due to the need to process a full slate of institution decisions, interlocutory decisions, and final decisions on an IPR docket four-to-five times larger than projected.  As a result, lately it is taking almost a month to issue those notices. … More

Hedge Funds Are People Too

iStock_000011987636_SmallThe Mangrove Partners Master Fund Ltd. is the latest hedge fund to get into the PTAB/short-sell stock game, successfully petitioning the Board to institute IPRs on two network security patents (IPR2015-01046 and IPR2015-01047). Interestingly, the two patents owned by VirnetX, a patent licensing company, were the subject of prior unsuccessful IPR petitions by other companies as well as district court litigation. Similar to the Patent Owners in the Kyle Bass petitions,… More

The Petitioner’s case doesn’t just start with the Petition—it ends with it.

Lawyers generally do not like to lay out their entire case at the outset of litigation.  They like to hold back some arguments to see how their adversary responds.  Yet a PTAB trial proceeding is one place where doing anything less than a full reveal could prove fatal.

The Petition is the one and only shot the Petitioner has at making the case for unpatentability. … More

Single-Judge Institution Decisions: Enough Quality Control?

goldfish showing discrimination success individuality leadership or motivation conceptThe Board was kicking around the idea of single-judge institution decisions for most of my tenure there.  But now they’ve formally requested comments on a proposed pilot program for single-judge institution decisions (deadline recently extended to October 26, 2015).  There’s ample precedent for this from the interference practice, where single-judge declarations of interference have been the norm for decades.

The rationale for introducing single-judge orders is simple: conserving judicial resources.  … More

PTAB: No “Abuse of Process” by Bass in filing IPR Petition against Celgene

Red seal and imprint "SANCTIONS" on white surface

In its recent decision, an expanded panel of the PTAB denied Patent Owner Celgene’s motion for sanctions against Petitioner “Coalition for Affordable Drugs VI, LLC,” and thereby refused to provide Patent Owners with a basis to halt the IPR challenges currently brought by hedge fund entities against the pharmaceutical industry.  Celgene had sought dismissal of several petitions.

Kyle Bass, the head of Hayman Capital Management LP,… More

When Joint Settlement Agreements Do Not Settle

The Patent Trial and Appeal Board’s Discretion To Maintain A Proceeding After Petitioner Termination

Under 37 CFR 42.74, parties to a trial before the Patent Trial and Appeal Board (PTAB) may mutually agree to terminate the proceeding.  However, the PTAB is not a party to the settlement and may independently determine any question of jurisdiction, patentability, or Patent Office practice irrespective of the parties’ agreement to terminate.… More