Inter Partes Review

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Pursuing Different Constructions Before the PTAB & Court?

Since the PTAB started applying the Philips standard for claim construction, petitioners have put a lot more thought into their proposed claim constructions. This is because it is no longer possible to point to the PTAB’s use of the broadest reasonable interpretation (BRI) as the basis for a different construction.

Now, petitioners are very careful to be consistent with disputed terms.  But, what happens if a petitioner argues for a broader construction at the PTAB, then argues for a more narrowed construction in the district court?
Continue Reading Keeping Your PTAB Story Straight

New PTAB Roadblocks & Strategies

Earlier this week I laid out my Top 5 PTAB cases of 2020 for PTAB Practitioners, focusing on those cases that changed day-to-day practices before the agency. Like the practitioner list, my Top 5 PTAB developments of 2020 for District Court Litigators will focus on those practical PTAB developments that will impact parallel litigation practices outside of the agency.

In 2020, there were a number developments of interest to litigators, from litigation forums where a PTAB challenge is foreclosed or highly unlikely, to stipulations for avoiding PTAB discretionary denials, and new risks of collateral estoppel across a litigated portfolio.
Continue Reading Top 5 PTAB Developments of 2020 for District Court Litigators

CAFC Refuses Remand on 112 6th Deficiencies

When challenging claims at the Patent Trial & Appeal Board (PTAB), Rule 42.104(b)(3) requires a Petitioner to identify the specific portions of a challenged patent’s specification that describe the structure corresponding to a claim’s means-plus-function claim feature.  Of course, if a petitioner fails to do so, the Board will reject Petitioner’s challenge for failing to comply with the Rule.  To the frustration of petitioners, however, where that failure is based upon the shortcomings of the challenged patent itself, the PTAB is  precluded from officially making such an indefiniteness determination.  Instead, the Board will simply conclude that the rule has not been satisfied.

A week back, the Federal Circuit reiterated this shortcoming of the IPR statutes.
Continue Reading PTAB Can’t Find Means-Plus-Function Claims Defective

Unrebutted Secondary Indicia Considered in Assessing Becton-Dickinson Factors

The submission of so-called “objective indicia of non-obviousness” at the PTAB is rarely effective, especially in the predictable arts (i.e., mechanical/electrical).  This is because the most common form of such evidence, “commercial success” is often difficult to tie to any particular claim feature (unlike drug formulations, for example).  That said, as a Graham Factor that is assessed in an obviousness determination, the failure to address previously established indicia could prove fatal to your petition. 
Continue Reading PTAB Denies Petition Overlooking Objective Indicia of Non-Obviousness

Statutory Petition Requirement Correctable

Back in April I discussed the Patent Trial & Appeal Board’s (PTAB) evolving position that an updated RPI designation did not require a resetting of the petition filing date. That is, despite telling Congress that the RPI was a statutory requirement for a petition to be considered in 2015, and that correction of RPI required a new filing date, the Board migrated to a new view that such mistakes could be excused if made without deceptive intent (more recently relying on a footnote in Wifi-One explaining the Board’s practice of accepting corrections to defective filings.)

Last week, the Federal Circuit issued a precedential opinion finding that the PTAB’s interpretation of its remedial regulations in this regard were not plainly erroneous or inconsistent.
Continue Reading CAFC Endorses PTAB Practice of Accepting Late RPI Designations

Close Trial Date to Doom Parallel IPR Petitions?

Last September, the Patent Trial & Appeal Board (PTAB) found the advanced stage of a parallel district court proceeding weighed in favor of denying a follow-on, IPR petition. NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc. That is, when weighing the equities of a follow-on petition under General Plastic, the competing litigation’s scheduled conclusion before the end of any potentially instituted IPR favored a discretionary denial of the petition under 35 U.S.C. § 314(a).

Since that time, the existence of late stage litigation proceedings has been raised in the context of first-filed petitions, and is beginning to gain traction there as well.
Continue Reading PTAB Equitable Analysis Extends Beyond Follow-on Petitions

PTAB 2018: A Year of Agency Recalibration

The Patent Trial & Appeal Board (PTAB) stole much of the 2018 patent law spotlight. From landmark Supreme Court decisions such as Oil States and SAS Institute, to significant en banc Federal Circuit decisions in WiFi-One, PTAB practice evolved more in 2018 than in any prior year. That said, the most impactful 2018 changes for practitioners were driven by the agency.

Under the pro-patent leadership of Director Iancu, the agency is expected to drive still further change in 2019.
Continue Reading Top 5 PTAB Practice Developments of 2018

ITC Staff Attorney Not Bound by Estoppel

Plaintiffs are painfully aware of the Patent Trial & Appeal Board (PTAB) and its potential to derail a patent litigation. Indeed, post-SAS patent owners facing motions to stay pending PTAB review are left with even less to argue. Even where a stay is avoided, the speed of the PTAB can undermine traditional litigation pressure points that traditionally drove parties to settlement (e.g., Markman). As such, plaintiffs are increasingly viewing the International Trade Commission (ITC) as the strongest foil to a PTAB attack.

The ITC, having its own mandate for speed does not stay pending PTAB review.  Likewise, an ITC Exclusion Order can be issued within the same time frame as a PTAB Final Written Decision, or faster. These advantages are not insignificant in today’s patent monetization landscape. But, the ITC is not without its PTAB trade-offs for Patent Owners.Continue Reading PTAB Estoppel May Not Stick at ITC

Invalidity Contentions Serve as Estoppel Benchmark

A Patent Owner may only avail itself of an IPR estoppel defense in court upon demonstrating that a competent prior art search would have uncovered the art that is asserted post-IPR (i.e., raised or reasonably could have raised during the IPR. 35 U.S.C. § 315(e)(2))  This demonstration of proof can be complicated by a number of factual questions such as the degree of skill of the searcher, the complexity of the art, and what was known by the petitioner and when.

A recent decision in the Southern District of Texas looks to simplify such disputes by utilizing invalidity contentions as estoppel markers. 
Continue Reading Invalidity Contentions as IPR Estoppel Markers