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PTAB decides that district court ruling favorable to Patent Owner does not justify stay of CBM proceedings

We have previously written about stays of litigation before the PTAB has acted on a petition for IPR or CBM review. A recent Board decision addresses a contrasting circumstance: staying a CBM proceeding in light of activity in litigation. In Samsung Elecs. Am., Inc. v. Smartflash LLC, (and related CBM review proceedings), the Board denied a Patent Owner’s request for authorization to file a motion to stay the CBM proceeding based on the Board’s statutory mandate to complete the CBM proceeding within one year of institution. CBM2014-00190, Paper 13 (May 6, 2015).

Smartflash sued multiple entities in the … Continue Reading

PTAB corrects petition’s filing date because e-filing system was down

In E*Trade Financial Corporation, et al. v. Droplets, Inc., the PTAB granted a motion to change the filing date of an IPR petition, according a filing date based on the initial submission of the petition via e-mail when the Board’s e-filing system (known as PRPS) was unavailable. IPR2015-00470, Paper 17 (Apr. 20, 2015).

Unless otherwise authorized, an IPR petition must be filed via PRPS. See 37 C.F.R. § 42.6(b)(1). When, however, PRPS is unavailable or down, a petition may be filed via e-mail at Trials@uspto.gov, the Board’s Trials mailbox. See http://www.uspto.gov/ip/boards/bpai/prps.jsp. The petition must be accompanied by … Continue Reading

More lessons learned about motions to stay pending CBM review

In Credit Card Fraud Control Corp. v. Maxmind, Inc., a defendant moved a Northern District of Texas court to stay litigation under AIA § 18(b)(2) based on a petition for CBM review that had not yet been instituted by the PTAB. No. 3:14-cv-3262, 2015 U.S. Dist. LEXIS 53775 (N.D. Tex. Apr. 24, 2015). Similar to the trend in the Eastern District of Texas and elsewhere, about which we have previously written, the motion to stay was denied without prejudice. To reach this conclusion, the court applied the four factors set out in AIA § 18(b)(1). The court’s … Continue Reading

Federal Circuit rules it has no interlocutory jurisdiction on denial of motion to stay until CBM Review is instituted

We have previously written about the emerging trend of district courts not granting motions to stay until IPR or CBM proceedings have been instituted. The Federal Circuit seemed to indirectly support that approach in its recent decision in Intellectual Ventures II LLC v. JPMorgan Chase & Co., in which it held that it lacked jurisdiction under § 18(b)(2) of the AIA to consider an interlocutory appeal on a motion to stay until the PTAB institutes a Covered Business Method Review proceeding. 781 F.3d 1372 (Fed. Cir. 2015).

Intellectual Ventures sued several JP Morgan Chase entities alleging infringement of … Continue Reading

PTAB finds patent non-obvious based on secondary considerations

In Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd., the PTAB found that the patented invention was not obvious based on the secondary considerations of commercial success and copying, even though it found that the prior art disclosed all of the limitations and that there was motivation to combine the teachings. IPR2014-00309, Paper 83 (Mar. 23, 2014).

The patent was directed primarily at improving disc hard drives, and of particular interest was the design of a tolerance ring. Specifically, the alleged patentable improvement was the provision of a funnel shaped guide portion at the axial end of … Continue Reading

PTAB grants Patent Owner’s adverse judgment request, thereby barring joinder of subsequent IPR petition

In Artsana USA, Inc. v. Kolcraft Enterprises, Inc., the PTAB granted the Patent Owner’s request for adverse judgment under 37 C.F.R. § 42.73(b) and found the challenged patent claims to be unpatentable. IPR2014-01053, Paper 24 (April 3, 2015). In so doing, the Board prevented a subsequently-filed petition from being joined to the IPR-at-issue and effectively denied the later petition as time-barred under 35 U.S.C. § 315(b).

37 C.F.R. § 42.73(b) allows a party to “request judgment against itself at any time during a proceeding.” Under 37 C.F.R. § 42.72, the PTAB is authorized to “terminate a trial without … Continue Reading

PTAB discourages delayed challenges to identification of real-parties-in-interest

In Sony Computer Entertainment America LLC, v. Game Controller Technology LLC, the PTAB was faced with a situation where a patent owner waited until a few weeks before an IPR proceeding was scheduled to end to challenge the petition’s identification of real-parties-in-interest (RPIs) under 35 U.S.C. § 312(a)(2), despite having all relevant information long before the IPR proceeding had started.  IPR2013-00634, Paper 31 (April 2, 2015). The delay caused the challenge to be brought after the one-year litigation bar under 35 U.S.C. § 315(b), thereby depriving the Petitioner of an opportunity to re-file its petition correcting any problems … Continue Reading

PTAB permits post-institution challenge to identification of all real-parties-in-interest

In GEA Process Engineering, Inc., v. Steuben Foods, Inc., the PTAB vacated its institution decision and terminated five IPRs because the petitions failed to identify all real-parties-in-interest (RPIs). IPR2014-00041, Paper 140 (December 23, 2014) (Public redacted version).

The Petitioner argued that the Patent Owner should be barred from raising the RPI issue after institution of the IPRs because the requirement under 35 U.S.C. § 312(a)(2) for identifying all RPIs in an IPR petition is a “petition completeness statute,” not a “standing” issue that may be challenged at any time. The Petitioner also argued that it should be allowed … Continue Reading

Rule changes for AIA trials are here, with more on the way

The USPTO recently announced changes to the rules for trials before the PTAB under the AIA.  The announcement, which may be found here, indicates that the changes will be implemented via a series of rule packages using a three-part roll-out plan, with the first rule package being effective as of March 27, 2015, and the second and third rule packages being rolled-out at later dates that have yet to be determined.

According to the announcement, the first rule package contains “‘quick fixes’ – changes of simple scope that will immediately improve the trial proceedings.”  These “quick fixes” include increasing … Continue Reading

An emerging norm: no stay until PTAB grants IPR petition

Defendants have one year from the date of service of a complaint of patent infringement to file a request for inter partes review of the asserted patent. 35 U.S.C. § 315(b). In Trover Group, Inc., et al. v. Dedicated Micros USA, et al., 2:13-CV-1047 (E.D. Tex. March 11, 2015), two defendants filed an IPR petition shortly before that one year deadline. Four weeks later, all four defendants filed a motion requesting that the district court stay the litigation until the PTAB resolved the IPR.

Federal Circuit Judge Bryson, sitting by designation, denied the stay motion without prejudice to refile … Continue Reading

Federal Circuit affirms PTAB in first review of IPR decision

In In re Cuozzo, the Federal Circuit held, in a 2-1 opinion, that decisions of the PTAB to institute an IPR are not appealable and confirmed the use of the broadest reasonable interpretation standard for claim construction proceedings in IPR. In re Cuozzo Speed Techs., LLC, No. 2014-1301 (Fed. Cir. Feb. 4, 2015).

The Court noted its previous holding (discussed here) that 35 U.S.C. § 314(d) precludes interlocutory review of decisions whether to institute IPR. The Court then found that § 314(d) excludes all review of these decisions, including after the Board issues a final decision, … Continue Reading

PTAB terminates IPR after institution for failure to identify all real parties in interest

In Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., the PTAB vacated its institution decision and terminated the IPR because the petition failed to identify all real parties in interest. IPR2013-00453, Paper 88 (Jan. 6, 2015).

35 U.S.C. § 312(a)(2) provides that an IPR petition may be considered only if the petition identifies all real parties in interest. The Patent Owner challenged the petition’s identification of real parties in interest in both the Patent Owner’s Preliminary Response and a Supplemental Preliminary Response, but the Board instituted the IPR based on the record at that time.

Following additional … Continue Reading

PTAB grants request for rehearing based on overlooked arguments

In Handi Quilter, Inv. v. Bernina International AG, the PTAB granted the Petitioner’s request for rehearing based on arguments it overlooked in its previous non-institution decision. IPR2014-00270, Paper 17 (December 30, 2014).

The challenged claims were directed to a quilting machine that automatically inserts stitches based on movement of the fabric, with the movement being detected by an optical sensor with specified functions.

The Petitioner’s primary obviousness reference described a similar motion-controlled quilting machine, but did not describe the function of the motion sensor in any detail. Instead, the reference merely indicated that suitable sensors were already known. … Continue Reading

A reminder from the PTAB that pro hac vice admission is not automatic

In QSC Audio Products, Inc. v. Crest Audio, Inc., the PTAB denied the Petitioner’s unopposed motion for pro hac vice admission because the affidavit in support of the motion failed to meet certain requirements. IPR2014-00127, Paper 32 (December 23, 2014).

37 C.F.R. § 42.10(c) provides that where lead counsel in a PTAB trial proceeding is a registered PTO practitioner, a motion to appear pro hac vice  by counsel who is not a registered practitioner may be granted upon a showing that such counsel “is an experienced litigating attorney and has an established familiarity with the subject matter at … Continue Reading

Norton Rose Fulbright’s free IPR webinar series begins on January 22

All readers of Patent Challenges are invited to attend our firm’s free IPR webinar series that begins on January 22nd and will continue throughout 2015.  This is sure to be an informative series for anyone looking to learn more about IPR practice – and CLE credit will be available.

The first session—led by Norton Rose Fulbright patent lawyers Mark Garrett and Ross Viguet—will focus on the patent owner’s preliminary response and how best to use it.

Register online and the dial-in/log-in information will be e-mailed to you a day prior to the webinar.

CLE information: We have applied Continue Reading

PTAB authorizes petitioner’s reply to preliminary response

In Johnson Health Tech Co. LTD v. Icon Health and Fitness, Inc., the PTAB authorized the Petitioner to file a Reply to the Patent Owner’s Preliminary Response in an IPR proceeding. IPR2014-01242, Paper 12 (November 28, 2014).

35 U.S.C. § 313 provides that, if an IPR Petition is filed under 35 U.S.C. 311, the Patent Owner has the right to file a Preliminary Response to the Petition that sets forth reasons why no IPR should be instituted based upon the failure of the Petition to meet any requirement of chapter 31 of title 35, United States Code. The … Continue Reading

Board denies patent owner’s request to file motion to vacate Final Written Decision

In Salesforce.com, Inc. v. VirtualAgility, Inc., the PTAB refused to permit the Patent Owner to file a motion to vacate the Final Written Decision, even though the parties settled while an appeal to the Federal Circuit was still pending. CBM2013-00024, Paper 52 (Nov. 24, 2014).

The Board held in the CBM Review that all challenged claims were unpatentable. The Patent Owner timely filed its Notice of Appeal to the Federal Circuit and, within two months of the Final Written Decision, the parties settled and moved to file their agreement as confidential business information. The Patent Owner then requested … Continue Reading

Board authorizes motion to dismiss following institution

In GTNX, INC. v. INTTRA, INC., the PTAB allowed the Patent Owner to file a motion to dismiss several instituted covered business method (CBM) reviews, despite the fact that the ground for dismissal was not raised in the Patent Owner’s Preliminary Response. CBM2014-00072, CBM2014-00073, CBM2014-00074 & CBM2014-00075, Paper 15 (Oct. 27, 2014).

Following institution of four CBM reviews, the Patent Owner sought authorization to file a motion to dismiss based on lack of standing under 35 U.S.C. § 325(a)(1), asserting that the Petitioner had filed a declaratory judgment action challenging the validity of the patents years before filing … Continue Reading

PTAB interprets the scope of the declaratory judgment bar for IPR petitions

In Ariosa Diagnostics v. Isis Innovation Limited, the PTAB ruled that filing a civil action for declaratory judgment of noninfringement and asserting an affirmative defense of invalidity do not bar a party from later filing an IPR petition. IPR2012-00022, Paper 166 (Sep. 2, 2014).

The Patent Owner contended that the IPR petition was statutorily barred under 35 U.S.C. § 315(a)(1) because it was filed after the Petitioner had filed a civil action for declaratory judgment of non-infringement and then raised invalidity as an affirmative defense in response to a counterclaim of infringement.

The PTAB rejected the Petitioner’s argument … Continue Reading

PTAB denies request to add additional challenge to claims in instituted CBM review

In Indeed, Inc. v. Career Destination Development, LLC, the PTAB denied the Petitioner’s request to file a motion to add the review of certain dependent claims under 35 U.S.C. §112, first paragraph, finding that the Petitioner did not present a “sufficient factual basis” to authorize the filing of the motion. CBM2014-00069 & CBM2014-00070, Paper 15 (Sep. 25, 2014).

The Petitioner sought to formally incorporate review of dependent claims 2-11 as encompassed by the PTAB’s review of independent claim 1 under 35 U.S.C. §112, first paragraph. During the initial conference call, Petitioner explained that it “accidentally neglected” to include … Continue Reading

PTAB panel creates new procedure for challenging scope of petitioner’s reply

In Toyota Motor Corp. v. Hagenbuch, the PTAB was presented with a novel procedural question regarding challenging the scope of the petitioner’s reply, which the Board resolved by creating what appears to be a new procedure.  IPR2013-00638, Paper 31 (Oct. 16, 2014).

Every IPR trial will have at least three major filings:

  1. the petition, in which the petitioner should set forth all the evidence and arguments necessary to establish invalidity;
  2. the patent owner’s response, in which the patent owner presents its own evidence and arguments in favor of patentability; and
  3. the petitioner’s reply.

The scope of the petitioner’s … Continue Reading

PTAB grants corrected filing date based on “clerical error”

In Schott Gemtron Corp. v. SSW Holding Company, Inc., the Patent Trial and Appeal Board (PTAB) granted the Petitioner’s motion to correct the filing date of its IPR petition based on a “clerical error” in uploading an incorrect exhibit. IPR2014-00367, Paper 30 (Sep. 22, 2014).

The IPR petition, filed on January 18, 2014, listed Exhibit 1109 as an expert’s supporting declaration.

However, Petitioner’s counsel inadvertently labeled two files as Exhibit 1109 and mistakenly uploaded a copy of a U.S. patent application as Exhibit 1109.

Upon discovering the error, Petitioner’s counsel filed the declaration on the next business day, … Continue Reading

Deadline for submitting comments to USPTO on AIA trials is this Thursday

A quick reminder that this Thursday (October 16, 2014) is the deadline for submitting comments responsive to the USPTO’s Request for Comments on America Invents Act (AIA) trial proceedings, which was originally published in the Federal Register on June 27, 2014.  The original deadline for comments was September 16, 2014, which the USPTO extended to this week due to stakeholder requests.

Several sets of comments have already been submitted and are available for review on the USPTO website, many of which argue against the PTAB’s use of the Broadest Reasonable Interpretation (BRI) standard for construing patent claims … Continue Reading

Welcome to Patent Challenges

When the America Invents Act (AIA) was passed into law in 2011, it was generally understood that the new post-issuance proceedings created by the law—Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method Review (CBM)—would change the landscape of patent ownership and assertion.

But the creation of these proceedings has had perhaps an even more dramatic effect than expected.

As reported by Docket Navigator, the Patent Trial and Appeal Board (PTAB) of the USPTO has quickly become one of the three most popular “venues” for patent litigation in the United States, trailing only the Eastern District … Continue Reading

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