Today, the USPTO has announced the appointment of David P. Ruschke as new Chief Judge for the Patent Trial and Appeal Board (PTAB). Ruschke will begin his new role at USPTO headquarters in Alexandria, VA, on May 23, 2016. The text of the press release is found below.
Continue Reading PTAB Names New Chief Judge
Yesterday, the Patent Trial & Appeal Board (PTAB) announced the designation of five, additional precedential decisions.
Garmin Int’l v. Cuozzo Speed Techs LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013) – This order discusses the factors considered in evaluating motions for additional discovery in IPR proceedings. Previously designated as informative, this decision has been treated as de facto precedent for quite some time.
Bloomberg, Inc. v. Markets-Alert Pty, Ltd., CBM2013-00005, Paper 32 (May 29, 2013) – This order discusses the factors considered in evaluating motions for additional discovery in CBM proceedings. (Garmin for CBMs)
Oracle Corp. v. Click-to-Call Techs, LP, IPR2013-00312, Paper 26 (October 30, 2013) (precedential only as to Section III.A.) – This decision pertains to interpretation of “served with a complaint” for purposes of triggering the one-year time bar set forth in 35 U.S.C. § 315(b). More specifically, this decision stands for the proposition that a dismissal of a prior law suit “without prejudice” prevents that suit from triggering the time bar of 315(b). This has also been de facto precedent at the PTAB.
Continue Reading PTAB Designates Five Precedential Decisions
Yesterday the Patent Trial & Appeal Board (PTAB) released a study on motions to amend. Contrary to popular belief, the majority of these motions are not denied on strict procedural grounds, but instead, on the merits.
The study points out that:
Last week, the PTAB issued a minor change to the AIA Trial Rules that became effective last Monday, May 2nd.
The second sentence of § 42.24(a)(1) was changed to state that the word count or page limit does not include a table of contents, a table
Back in December of 2014, the International Trade Commission (ITC) instituted an investigation at the behest of RealD. The complaint alleged violations of section 337 based upon the importation of certain three-dimensional cinema systems, and components thereof, that infringe certain claims of U.S. Patent Nos. 7,905,602 (“the ‘602 patent”), 7,857,455 (“the ‘455 patent”), 7,959,296 (“the ‘296 patent”), and 8,220,934 (“the ‘934 patent”). MasterImage 3D, Inc. was the named respondent.
In October of 2014, MasterImage filed seven (7) IPRs against the asserted patents. Five of these IPRs were denied institution, but two proceeded, one on the ‘934 and the other on the ‘455. Readers may be familiar with “MasterImage” based upon the informative decision on amendment practice.
Thereafter, on December 16, 2015, the presiding ALJ issued a final ID finding a violation of section 337 with respect to all but the ‘602 patent. The ALJ found that the asserted claims of each patent are infringed and not invalid or unenforceable. These findings were appealed to the full Commission. On February 16, 2016, the Commission determined to review the final ID in part and requested additional briefing from the parties on certain issues. On April 14, 2016, MasterImage filed a letter, notifying the Commission that, on that same day, the USPTO’s Patent Trial and Appeal Board (PTAB) issued a Final Written Decision finding claims 1, 6-10, and 18-20 of the ‘934 patent unpatentable.
Continue Reading ITC Grapples with IPR Impact in Ongoing Investigation
Attached (here) is a transcript from Monday’s argument.
My view is that the a majority of the Court was not buying Cuozzo’s key BRI arguments. Namely, his iterative amendment argument, and his adjudicative distinction. Most of the questions for the government seemed informational (on parallel tracks a patent dispute may take (Roberts)), as opposed to the disputed issues. While issues of policy are always part of a SCOTUS appeal, I don’t see them moving the needle here absent something more. It was the “more” that will be the problem for Cuozzo..
Some notable exchanges:
Continue Reading Cuozzo Argument : BRI Lives
At 1PM today, the Supreme Court of the United States will hear arguments in Cuozzo Speed v. Lee. As previously discussed, in its petition for certiorari Cuozzo presents two issues for review:
1. Whether the court of appeals erred in
Over the past week, amicus briefs supporting the respondent (U.S. Gov’t) have been filed with the Supreme Court in Cuozzo Speed v. Lee. These ffilings are linked below, including my own for Unified Patents.
Patentees have lamented the inability to submit new, testimonial evidence via preliminary response since the inception of the Patent Trial & Appeal Board (PTAB). It was argued that since AIA trial petitions almost always included testimonial evidence, the inability to respond in kind was procedurally lopsided in favor of challengers. Because of this perceived imbalance, patentees insisted that trial institution was a foregone conclusion. Of course, if this patentee criticism were valid, far more trials would conclude favorably to patentees once such evidence is entered (it is permitted later, during trial).
Continue Reading Patentees Beware: New PTAB Evidentiary Option Might Not Help
The USPTO has issued new final rules today to make targeted modifications for AIA trial practice before the Patent Trial and Appeal Board (PTAB). (here) These amendments to the rules were initially proposed to the public in August 2015. The rule changes apply to all