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New PTAB Rules Take Effect May 2, 2016

The Patent Office has published a final rule with amendments to 37 CFR § 42, et seq., governing IPR, CBM, PGR, and derivation proceedings before the Patent Trial and Appeal Board. The new rules take effect Monday, May 2, 2016 and apply to all AIA petitions filed on or after that date and to any ongoing proceeding or trial before the Office. A revised Trial Practice Guide is forthcoming.

The published final rule describing the amended rules is available here. A redline comparing the amended rules to the old rules is available here.

We detail the major … Continue Reading

PTAB cautiously authorizes motion to disqualify expert

In Agila Specialties Inc. v. Cephalon, Inc., the PTAB provided guidance on seeking the disqualification of an expert. Although the Board authorized the Patent Owner to file a Motion to Disqualify the Petitioner’s expert on the basis of an alleged conflict of interest, the Board raised a host of issues the Patent Owner would need to address in its motion. IPR2015-00503, Paper 13 (Aug. 19, 2015).

The Patent Owner, which did not raise the issue of disqualification until after the Board instituted trial, asserted that Petitioner’s expert served as a consultant for the Patent Owner under the terms … Continue Reading

Expert testimony is not always necessary to show unpatentability in IPRs

In Guangdong Xinbao Electrical Appliances Holdings v. Adrian Rivera, the PTAB denied a motion to exclude an expert declaration relied upon by the Petitioner in its Reply to the Patent Owner’s Response. In its ruling, the Board took the opportunity to clarify that expert testimony is not always necessary for an IPR Petitioner meet its burden to establish unpatentability by a preponderance of the evidence. IPR2014-00042, Paper 50 (Feb. 6, 2015).

In its motion to exclude, the Patent Owner argued that it was impossible for the Petitioner to meet its burden to show unpatentability without expert testimony as … Continue Reading