Attorneys handling an IPR should never be neglectful, of course, but the director of the US Patent and Trademark Office (USPTO) recognizes that neglect in some circumstances is excusable. In a recent IPR, the USPTO determined that the patent owner’s late filed appeal was “excusable neglect”—i.e., not good, but not so bad that the patent owner should lose the right to appeal. Rather than inviting anyone to disregard deadlines, this case is a reminder for attorneys to avoid problems by communicating clearly with clients and co-counsel.
Topics: Patent Owners
Patent owners have long known that making consistent arguments during IPRs and in district court litigation is critical to preserve credibility. The Federal Circuit recently took that a step further by holding that patent owners can be prevented from making arguments in district court that contradict their arguments in an IPR. More so than ever, patent owners must watch what they say during an IPR.
Topics: Patent Owners
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.
“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?
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.
…may be to not amend in a post-grant proceeding. We have previously written about the difficulties and low success rates of amending patents in a post-grant proceeding, and suggested reissue as an alternative pathway to amendments. American Express v. Signature Systems, LLC, CBM2015-00153 (paper 17) demonstrates that a patent owner could also use supplemental examination to make claim amendments—even if a petition challenging the patent is filed.
Topics: Patent Owners
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).
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.
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).
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.