Tag Archives: IPR

ITC, District Court, PTAB (Oh, My): Managing Triple-Header Patent Litigation

A district court litigation has lots of moving parts all by itself. But add in an IPR and then an ITC Section 337 investigation, and it may become more than the parties can handle. But will the parties agree to stay any of the proceedings? And even if they agree, would any of the tribunals oblige?

The answer, it seems, is that when the parties don’t agree,… More

We Never Make Misteaks

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

A 325(d) Denial on New Art: What the What?

iStock_000024744727_SmallSo 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

What’s In a Claim? IPR Can Be Denied For Indefiniteness

ptab-blogPetitioners 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

The PTAB’s Subpoena Power

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

Motion for Observations: A Late Game-Changer

Antique hourglass, black sand, textured background. Right of image, blank space on left, landscape, top half almost empty.

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 Cost-Effectiveness of PTAB Proceedings

image001PTAB 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

315(b) Bars Lurk in Unlikely Places

iStock_000004696356_Small315(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

How Many Litigated Patents are Actually Subject to PTAB Proceedings?

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