Have you ever tried a Pre-Appeal Brief Request for Review? Ever wish you could sit in on the Examiner’s conference? Well now you can, under a new pilot program launched today, July 11, 2016. It’s called P3 (“Post-Prosecution Pilot Program”) and combines some aspects of after-final practice with an expanded role for the applicant in a pre-appeal review.
Category Archives: Practice Tip
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
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
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.
- 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
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
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
- 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).
- Expert judges. …
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