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New Decision Explores 315(e)(1) Estoppel

Today, the Patent Trial and Appeal Board (PTAB) added the recent Decision on Institution rendered in Dell, Inc. v. Electronics and Telecomms. Res. Inst., IPR2015-00549 Decision Denying Institution, Paper 10, Mar. 26, 2015, to the list of Representative Orders, Decisions, and Notices on its web page. (here)

The decision, like many recent representative decisions is rather straightforward. In this decision, the Board held that the Petitioner is estopped under 35 U.S.C. § 315(e)(1) from requesting inter partes review because: (1) the Petitioner was the same petitioner as in a prior proceeding; (2) the patent and claims challenged in both cases are the same; and (3) the prior art raised in the second petition and in the prior proceeding are the same. (The petitioner used the same prior art in a different combination to allege obviousness of the claimed subject matter). The decision held that the art of the second filing not only “could have been raised” in the first filing, but , in fact, was raised.

As discussed during yesterday’s PatentsPostgrant.com webinar, the application of the “could have raised” standard in the estoppel context is required by statute. On the other hand, applying the “could have raised” standard outside of 315(e)(1) situations, such as to a follow-on petition that is not subject to estoppel is becoming worrisome for many filers.

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Continue Reading PTAB Considers “Could Have Been Raised” Estoppel

USPTO Explains Interim Policy After CLS Bank

Last week, Acting Deputy Director of the USPTO Michelle K. Lee appeared before the House Judiciary Committee. While largely an uneventful visit to report on agency progress, a few interesting questions were posed with regard to treatment of current patent applications under Alice Corp. v. CLS Bank. At the hearing, Director Lee was asked about reports that the USPTO was pulling allowances for a reassessment of claims under, CLS. (Back on June 25th the USPTO issued interim examination guidelines for assessing the statutory nature of patent claims in view of the landmark decision.)…
Continue Reading PTO Yanks Allowances After CLS Bank

Technical Difficulties, Sorry for the Inconvenience

Now that PatentsPostGrant.com has hit the 5 year mark, it was time to abandon our 2008 era platform. Please excuse the unnecessary email notifications that went out today, all should be sorted out by tomorrow. (Notifications are disabled for the time being, so please check back frequently, or switch…

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hammerUnlike pre-grant patent prosecution, the submission of declaration evidence under 37 CFR 1.131/132 in patent reexamination is not only common, but the norm. This is due to the fact that there are no opportunities to continue patent reexamination via RCE as in pre-grant prosecution. Likewise, amending claims in patent reexamination is problematic as the Patent Holder may surrender past damages under the doctrine of intervening rights. Where a Patent Holder has invested significant time and money in enforcing their portfolio, intervening rights are of paramount concern. As such, convincing the USPTO of patentability without amendment typically requires more than attorney argument, hence the heightened importance of declaration practice in patent reexamination.

A threshold issue in patent reexaminations concurrent with litigation is whether or not the declarant should be the same expert who is expected to testify at trial, or a new expert retained for reexamination purposes only. This decision is affected by several factors, including the risk of two experts taking inconsistent positions and the likelihood that the declarant in the reexamination will be deposed.
Continue Reading Shielding an Expert Declarant in Patent Reexamination from Deposition in Concurrent Litigation?