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
Tag Archives: petition
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.…
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
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