In its Final Written Decision, the Board found that claims 33-60 of the ’281 Patent are unpatentable, granted Patent Owner’s Motion to Amend to cancel claims 1-32 of the ’281 Patent, and denied Patent Owner’s Motion to amend to add proposed substitute claims 61-68. The ’281 Patent discloses an apparatus for protecting data.
Monthly Archives: April 2016
IPR2015-00720 Request for Rehearing Denied
In its Decision, the Court denied Petitioner’s request for rehearing of the Board’s decision denying inter partes review of the challenged claims of the ’685 Patent.
IPR2015-01457 Request for Rehearing Granted
In its Decision, the Board granted a request for rehearing on the decision on institution, and instituted review of claims 8-10 of the ’640 Patent. Continue reading
Evidence Supporting Prior Art Status of Reference Permitted with Reply in Final Written Decision Finding Challenged Claims Unpatentable IPR2015-00052
In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that the challenged claims of the ‘944 patent are unpatentable under 35 U.S.C. § 103. The ‘944 patent “relates to backing up and restoring file systems” by “copying information describing changes in the file system since a previous point in time.” Continue reading
Stipulated Motion to Extend Time for Preliminary Response in Light of Settlement Negotiations Denied IPR2016-00423
In its Order, the Board denied the parties’ stipulated motion to extend time for Patent Owner’s preliminary response to the Petition. Patent Owner had emailed the Board on behalf of both parties “seeking a two-month extension of the filing deadline for Patent Owner’s preliminary response, in light of ongoing settlement negotiations.” The parties further agreed “to expedite the proceedings if inter partes review is instituted.” Continue reading
Granting Request for Rehearing based on Board’s Sua Sponte Identification of Unargued Basis for Earlier Prior Art Date IPR2015-01189
In its Decision, the Board granted Petitioner’s Request for Rehearing of the Board’s Decision Denying Institution of Inter Partes Review. The Board had denied institution, holding that Petitioner had failed to establish a prior art date for the Kikinis CIP reference. In granting rehearing, the Board identified an alternative route to establish an earlier prior art date for the Kikinis CIP, and indicated that another Institution Decision addressing the merits of the Petition would be forthcoming. Continue reading
Denying Institution because Petitioner Found to Lack Standing CBM2015-00180
In its Decision, the Board denied institution of any covered business method patent review because Petitioner lacked standing. Petitioner Phoenix Licensing was the sole remaining petitioner after several parties had been terminated from the proceeding. Because Phoenix Licensing itself did not have standing, the Board denied institution. Continue reading
Decision Denying Second Request for Motion to Stay CBM Proceeding CBM2015-00161
In its Decision, the Board denied Patent Owner’s second request to file a motion to stay the proceeding “pending a decision of the U.S. Court of Appeals for the Federal Circuit on a second petition for a writ of mandamus, in view of [the Board’s] denial of Patent Owner’s first request for a motion to stay.” In particular, the Board found Patent Owner’s request to be premature and that there was insufficient cause to deviate from the normal course. Continue reading
USPTO Issues New Rules For PTAB Proceedings
The USPTO has now issued a new set of rules for practice before the PTAB. The new rules, which constitute a finalized version of an earlier proposal made available for public commentary in August of 2016, amend the existing trial practice rules in place for IPR, PGR, and CBM proceedings. Under the new rules:
- a patent owner will be allowed to submit testimonial evidence, such as expert declarations, in its patent owner preliminary response, although “if a genuine issue of material fact is created by testimonial evidence, the issue will be resolved in favor of petitioner solely for institution purposes, so that petitioner will have an opportunity to cross-examine the declarant during the trial;”
- certain papers filed in a proceeding will require a Rule 11-type certification, and attorneys may be sanctioned for violations such as failing to conducti an adequate investigation prior to filing the petition;
- the Board will continue to use the broadest reasonable interpretation (BRI) claim construction standard, except that in cases where the claims of the challenged patent will expire before the final written decision, the Board will use the Phillips-type district court standard; and
- major briefings, including the petition, patent owner preliminary response, patent owner response, and petitioner’s reply brief, will now be subject to word count limits rather than the current page limits.
The USPTO declined to institute a pilot program that had been proposed under which a single judge, rather than the three-judge panel, would decide whether to institute certain proceedings.
According to the USPTO, it “will amend its Office Patent Trial Practice Guide to reflect these rule changes and developments in practice concerning how the USPTO handles motions to amend, additional discovery, real party-in-interest and privy issues, and confidential information.”
The new rules are set to take effect in 30 days, i.e., on May 2, 2016. The corresponding Federal Register Notice can be found at https://www.federalregister.gov/articles/2016/04/01/2016-07381/amendments-to-the-rules-of-practice-for-trials-before-the-patent-trial-and-appeal-board.