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CAFC: Success/Motivation Record Intertwined in Predictable Arts

As borne out by historical PTAB statistics, and not unexpectedly so, patents in the unpredictable arts are more likely to withstand PTAB scrutiny as compared to patents in the predictable arts. For example, formulating a pharmaceutical has a lot more variables and unknowns than adding a drop-down menu to a particular computer interface. The latter requiring only a change in computer code. For this reason a successful obviousness challenge in the unpredictable arts typically requires far more evidence/effort on such showings as “expectations of success” in combing prior art references.

That is not to say that Patent Owners in the predictable arts should forego potential arguments on expectation of success. Rather, such Patent Owners need to be mindful that an expectation of success argument may have a limited shelf-life.…

Continue Reading Early Opportunity for PTAB Patent Owners – Expectation of Success

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Amended Rule Moves Focus to Admissibility

Back in April the Supreme Court approved changes to FRE 702 (Expert Witness Testimony) that will take effect on December 1st. These changes clarify that the preponderance of evidence standard controls the evaluation of expert testimony while also providing structural changes designed to refocus the trial court on admissibility.

Enhancing the gatekeeping function of the courts moves current practice away from erring on the side of admissibility. This also avoids fact finders needing to assign an appropriate weight where reliability is in question; such practices are especially confusing for juries.

But, what does the change to FRE 702 mean for declarant testimony at the PTAB?

Continue Reading FRE 702 Amendment & The PTAB

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Declarations Are Often Limited in Scope & Content

The USPTO Director issued a precedential decision last month in Xerox Corp. v. Bytemark, Inc. that explained declarant testimony that merely repeats, verbatim, conclusory assertions of the petition (without citing additional evidence or providing technical reasoning), is to be given little weight. I didn’t find this determination to be blogworthy since this was how such testimony was being consistently treated by the Board.

What strikes me most about the decision was the need for the PTAB to have to emphasize such to the bar in the first place.

Continue Reading A PTAB Declaration is Not an Expert Report

Are Two Heads Better than One?

When faced with parallel PTAB and District Court/ITC proceedings, both patent owners and petitioners alike must decide whether to use the same expert in each proceeding, or hire a dedicated expert for each. Certainly there is much efficiency to be gained using the same person — not to mention the seeming likelihood of greater consistency in opinion.

But it is preferable, in my view, to use separate experts. This often limits document inventory for the PTAB deposition, and opposing counsel is less inclined to extend the deposition with questions that are designed to illicit fodder for the litigation effort. Likewise, use of separate experts does not give litigation counsel extra “shots” at the same witness.  Also, with the PTAB now applying the same Philips claim construction of the district court, as discussed previously, there is also an increased interest in claim construction related testimony should the PTAB proceeding fail.

Recently, the District of Delaware considered whether a litigation expert should have to divulge any consulting (non-testifying) work with respect to an earlier PTAB proceeding.…

Continue Reading Using the Same Expert at the PTAB & District Court?

Previous Testimony May Highlight Infringement

When a failed PTAB petitioner heads back to court, Patent Owners sometimes seek to leverage the broad claim reads proposed at the PTAB to demonstrate infringement. Recently, in ChanBond, LLC v. Atlantic Broadband Group, LLC, et al., (D.DE., Apr. 19, 2021), the district court considered the admissibility of previous IPR testimony to an infringement case.
Continue Reading Can Previous IPR Testimony Come Back to Haunt a Failed Petitioner?

Frequent Losing Argument at the PTAB Finds Rare Exception

A common losing argument at the PTAB is that a reference used in an obviousness combination is non-enabling.  The reason this argument fails is that a reference is prior art for all that it teaches.  But even this proposition has its exceptions.  For example, one would not expect a Dick Tracy comic from the 1930s showing a communicating wristwatch to somehow preclude patents on today’s smartwatches.

But where is the line drawn as to aspirational disclosures and, fair, prior art teachings?…

Continue Reading Aspirational Prior Art Disclosures & Enablement

Final Rule Package Updates Current PTAB Practices with Two Additions

The USPTO will publish a final rule package today (draft here) that largely presents the earlier Notice of Proposed Rule Making in final form. Most of the changes addressed rules outdated by the SCOTUS decision in SAS Institute, or simply codified existing practices, such as sur-replies.  As such, the bulk of the earlier proposals were not controversial.

However, the earlier Notice also proposed one new idea, eliminating the presumption accorded to petitioner testimonial evidence in the preliminary proceeding (when disputed by patent owner testimonial evidence to the contrary). This proposal was the focus of much of the public commentary.

Despite most bar associations opposing this change, the final rule will in fact eliminate the presumption, starting January 11th (January 9th being a Saturday). The Final Rule also adds a new rule-based prohibition on Sur-reply filings.
Continue Reading PTAB to Eliminate Institution Presumption on January 11th

CAFC Faults PTAB Nexus Presumption

A proper obviousness analysis under Graham v. John Deere analyzes four factors: (1) the scope and content of the prior art; (2) the differences between the prior art and the patent claims; (3) the level of ordinary skill in the art; and (4) secondary considerations or “objective indicia” of non-obviousness. Yet, objective indicia arguments are relatively uncommon in the predictable arts.  And even when they are advanced, the argument is rarely effective. This is because establishing  a nexus between a patent claim and such amorphous concepts as “commercial success” (the most commonly advanced form of indicia) is a far more complex undertaking than most practitioners appreciate.

A patentee is entitled to a rebuttable presumption of nexus between its asserted objective indicia and a patent claim if the patentee shows that the indicia is tied to a specific product and that the product is the invention disclosed and claimed.  Earlier this week, the Federal Circuit analyzed how close a claim needs to be to the purported “invention” to qualify for the presumption of nexus.
Continue Reading Critical Aspects of Invention Need to Be Claimed for Secondary Indicia to Stick

POPR Disclaimer Dooms Infringement

Some weeks back I explained the varied uses of Patent Trial & Appeal Board (PTAB) trial evidence in district court trial records. However, it is not necessary for a trial to occur for patent challengers to create litigation value. For example, often times a petition will apply prior art that operates in a similar fashion to the accused product.  In distinguishing that art, the Patent Owner is effectively arguing against infringement.

In such cases, a failed AIA trial petition (art distinguished) can result in ultimate victory on the ligation side.
Continue Reading When Losing is Winning at the PTAB

Continuous Diligence Not Required

Although the United States has been a first-inventor-to-file patent system since March 16th 2013, the patents of the previous first-to-invent system will linger for many years to come. For those patents, the ability to “swear behind” prior art will remain.

Under pre-AIA §102(g), when two persons invent the same invention, for the latter inventor to be entitled to the patent, she must demonstrate that she (1) was the first to conceive of the invention and (2) was reasonably diligent in reducing it to practice. The Federal Circuit recently ruled on what, exactly, “reasonable diligence” entails at the Patent Trial & Appeal Board (PTAB) in Arctic Cat Inc. v. GEP Power Products, Inc. (here)…
Continue Reading Reasonable Diligence & Antedating Evidence