Can I Get A Witness—With the Right Experience at the Relevant Time?

Posted by Kevin MacDonald on Oct 27, 2017

No matter whether you are the patent owner or petitioner in an IPR, expert witness testimony is an important aspect of building your case. The Board relies on expert witnesses to provide insight into the often highly technical aspects of a given case, and will inevitably choose to give more weight to the testimony of one side’s witness over the other. This can be especially true when the testimony of the opposing experts is in direct conflict. So how does the Board choose which expert testimony to give more weight? Sometimes it’s a question of timing, as in the recent decision in Mylan Pharmaceuticals Inc. v. AstraZeneca (IPR2015-01340).

Read More

Topics: Petitioners, Patent Owners

PTAB to Petitioners:  Don’t Hold Back

Posted by Scott Forman on Mar 30, 2017

Scott Forman

An IPR petitioner may, by request, and at the PTAB’s discretion, join another party’s prior filed IPR [1]. A petitioner may seek to join an IPR to avoid the bar to filing more than one year after service of a complaint alleging infringement or to ensure the petitioner can continue its IPR if the parties to the prior filed IPR settle. If the petitioner’s challenge is substantially the same as that in the earlier IPR, it weighs in favor of joinder [2]. Parties often copy the petitions from prior filed IPRs to facilitate joinder. 

Read More

Topics: Petitioners

Claim Amendment Déjà Vu All Over Again?

Posted by Ed Walsh on Aug 25, 2016

Ed Walsh

The Federal Circuit seemingly had put to rest the question of whether, in making an amendment in an IPR, the petitioner bears the burden of proving an amended claim unpatentable or the patent owner bears the burden of proving the amended claim patentable. Microsoft Corp. v. Proxyconn, Inc. upheld PTAB procedures placing the burden on the patent owner to prove patentability. Other CAFC panels—including Prolitec, Inc. v. ScentAir Techs., Inc. and Nike, Inc. v. Adidas AG—followed. Currently, claim amendments are evaluated in accordance with the PTAB’s guidance in Idle Free Systems, Inc. v. Bergstrom, Inc. and MasterImage 3D, Inc. v. RealD Inc. As set out in these cases, the patent owner must prove patentability over prior art of record, which includes the prior art cited in the original prosecution of the challenged patent, as well as prior art that the patent owner should put on the record in accordance with its duty of candor.

Read More

Topics: Petitioners, Patent Owners

When One Door to an IPR Proceeding Closes, Another Opens

Posted by Nathan Speed on Mar 31, 2016

Nathan Speed

“When one door closes another door opens; but we so often look so long and so regretfully upon the closed door, that we do not see the ones which open for us.”  — Alexander Graham Bell

The AIA prohibits the PTAB from instituting an IPR proceeding “if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” How, then, did Apple recently convince the PTAB to institute an IPR proceeding against two patents it was indisputably served with a complaint alleging infringement of more than five years earlier? 

Read More

Topics: Petitioners, Patent Owners

Federal Circuit Orders the PTAB to Play Fair

Posted by Nathan Speed on Mar 16, 2016

Nathan Speed

Should the PTAB consider disclosures in an allegedly anticipatory reference that were identified for the first time during an oral hearing? No, according to the Federal Circuit, which ruled recently in a PTAB appeal that a patent owner was denied “notice and a fair opportunity to respond” in such a situation.

Read More

Topics: Petitioners, Patent Owners

Does New Matter in a Reply Declaration Still Matter?

Posted by Eric Kaviar on Nov 16, 2015

Eric Kaviar

Should an IPR petitioner be able to submit its first expert declaration during reply briefing? In Belden Inc. v. Berk-Tek LLC, the Federal Circuit affirmed the PTAB’s decision to allow a petitioner to do just that. According to the court, the PTAB did not abuse its discretion by allowing the declaration because the testimony fairly responded to points made by the patent owner’s expert and was not necessary for the petitioner’s prima facie case of obviousness (consistent with the requirements of 37 C.F.R. § 42.23(b) and guidance of the Patent Office Trial Practice Guide).

Read More

Topics: Petitioners, Patent Owners

Winning at the PTAB Can Be a Real Loser

Posted by Elisabeth Hunt on Nov 5, 2015

Elisabeth Hunt

IPR challenges can only be based on prior art patents and printed publications; the PTAB does not have authority to invalidate claims for being indefinite, much as it might want to. So when a claim is indefinite and therefore cannot be construed, the PTAB can only dismiss the petition. Sound like a win for the patent owner? Maybe. But the district court may be paying attention, and it may not be long before the claim that survived IPR gets killed in court under the indefiniteness roadmap already laid out before the Board.

Read More

Topics: Petitioners, Patent Owners

Petitioners: Amendment Practice Without a Crystal Ball

Posted by Ed Walsh on Oct 26, 2015

Ed Walsh

Post-grant proceedings theoretically allow the patent owner to amend the claims of a challenged patent, which can be a significant advantage. However, in practice, the patent owner has been allowed to amend claims in only a handful of the thousands of cases filed. That dismal showing has prompted calls for more balance between patent owners and petitioners. Action by the PTAB, the courts or Congress could make amendments a more viable option. What can petitioners do in the meantime, in the face of this uncertainty?

Read More

Topics: Petitioners

Estop or Go at the PTAB

Posted by Ed Walsh on Oct 7, 2015

Ed Walsh

The price of challenging a patent in an IPR or post-grant review is often said to include estoppel that would block, at a minimum, other challenges at the Patent Office to any claims for which a final written decision is issued by the Board. We recently commented on a potential exception to this rule. A further exception is being debated in International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2014-01465 (Paper 29).

Read More

Topics: Petitioners, Patent Owners, IPR Estoppel

Board Opens the Floodgates to Let Bass Through

Posted by John Harmon on Oct 2, 2015

John Harmon

Kyle Bass and the Coalition for Affordable Drugs have scored a big win in the multiple IPRs they filed to invalidate Celgene Corp.’s patents and ultimately profit by shorting its stock. The Board has ruled against imposing the sanctions Celgene requested against Bass for improper purpose and/or abuse of process, clearing the way for all of the IPRs to proceed. The reasons advanced in the ruling may open up the IPR process to entities well beyond those that have traditionally used procedures at the Patent Office to invalidate patents.

Read More

Topics: Petitioners, Kyle Bass, Patent Owners

Wolf Greenfield's Post-Grant Blog

Here, the Post-Grant Proceedings Group
at Wolf Greenfield keeps you up to date
on the latest decisions and best practices, and what they mean for you. Learn more about the group and its members.

New Call-to-action
New Call-to-action
New Call-to-action

Subscribe to Email Updates

Recent Posts

Follow Us

This blog is intended to promote thought and debate on developing areas of the law. The opinions, commentary and characterizations of cases provided on this blog are not legal advice and do not represent the opinions of Wolf Greenfield or its clients.