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).
An IPR petitioner may, by request, and at the PTAB’s discretion, join another party’s prior filed IPR . 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 . Parties often copy the petitions from prior filed IPRs to facilitate joinder.
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.
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.
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?
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.