Walter Egbert and I co-wrote “Good, Fast, Cheap Certainty: The Case for Patent Office Litigation,” which was published recently in The New York Law Journal.  The article examines the attractiveness of IPR as an alternative to traditional litigation due to its cost and speed advantages, as well as for the certainty it provides to business executives seeking to de-risk intellectual property issues.  … More

Petitioners 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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When 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 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

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

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

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

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

The 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

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