Who Bears the Burden in IPR? It Depends on the Argument

Posted by Stuart Duncan Smith on Oct 23, 2018

Stuart Duncan Smith

A hallmark of IPR proceedings is that the petitioner—not the patent owner—has the burden to prove that the challenged claims are unpatentable. This hallmark is statutory as section 316(e) of the American Invents Act (which created IPRs) provides that “the petitioner shall have the burden of proving a proposition of unpatentability.” And yet, a recent decision from the Federal Circuit confirms IPR nonetheless applies the traditional rule that can shift a burden to the patent owner to rebut the petitioner’s prima facie case of obviousness. Patent owners thus cannot blindly rely upon section 316(e) and, in certain circumstances, should consider submitting evidence to defend the claims.

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Topics: Patent Owners, Petitioners

In IPR Petitions, Paste Makes Waste

Posted by Tom Chlebeck on Feb 26, 2018

Tom Chlebeck

The PTAB recently signaled a warning to petitioners about the dangers of third party submissions made during patent prosecution—even during prosecution of a separate but related patent. For patent holders, this warning serves as an opportunity to protect their patents in similar situations. In PGR2017-00038, Live Nation Entertainment, Inc. filed a petition to institute post-grant review of U.S. Patent No. 9,466,035. Live Nation’s arguments were that the claims were patent ineligible under 35 U.S.C. 101 and would have been obvious under 35 U.S.C. 103.

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Topics: Patent Owners, Petitioners

Supreme Court May Let IPRs Continue

Posted by Elizabeth Hudson on Dec 8, 2017

Elizabeth Hudson

Last week, the Supreme Court heard oral arguments in Oil States Energy Services v. Greene’s Energy Group—a case that addresses whether inter partes review unconstitutionally usurps the federal courts’ authority to adjudicate the validity of patents. An examination of the Justices’ questions provides hints of how they are thinking and suggests that IPRs may survive constitutional review.

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Topics: Patent Owners, Petitioners

Supreme Court Suggests a Partial Solution to Partial Institutions

Posted by Elizabeth Hudson on Dec 4, 2017

Elizabeth Hudson

Last week, the U.S. Supreme Court heard oral arguments in two patent cases concerning IPRs. The first case (Oil States Energy Services v. Greene’s Energy Group) has garnered much of the attention because it concerns the constitutionality of IPRs, but the second case (SAS Institute Inc. v. Matal) may actually have a bigger impact on how IPRs work. In SAS, the Supreme Court considered the PTAB’s practice of selecting which challenged claims it reviews, rather than, once it institutes a trial, issuing a final decision on the patentability of all claims challenged in the petition. The oral arguments suggest how the Justices are approaching the case.

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Topics: Patent Owners, Petitioners

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

Posted by Kevin MacDonald on Oct 27, 2017

Kevin MacDonald

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).

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Topics: Patent Owners, Petitioners, BioPharma

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. 

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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.

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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? 

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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.

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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).

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Topics: Petitioners, Patent Owners

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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.