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
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
Significant 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.
- 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
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
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.