Tag Archives: institution

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

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

So 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

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

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

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

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