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

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 proper reliance on new evidence in a Reply is a common issue at the patent office. The Board in Volkswagen Group of America, Inc. v. Emerachem Holdings, LLC, IPR2014-01555 (Paper 36), recently authorized briefing on whether the Petitioner had properly relied on new evidence in its Reply:

New issues raised in a reply have been, and continue to be,… More

It was my honor to serve with Former Chief Administrative Patent Judge James Donald Smith at the PTAB.  Please please join me in congratulating him on his appointment as Chief Intellectual Property Counsel at Ecolab. More

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

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

There’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 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

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

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