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.
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.
Takeaway: Because the threshold for instituting trial is different than the threshold for proving unpatentability of a claim in trial, a petitioner may be allowed submit evidence supporting the prior art status of a challenged reference in its reply.
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
Takeaway: Settlement negotiations may not provide sufficient cause to extend time for filing the preliminary response in light of the fact that the filing of a preliminary response is optional and a patent owner may waive such a filing if doing so would facilitate settlement.
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
Takeaway: A priority benefit to an earlier filed application requires both that there be continuity to the earlier application and that the salient description is present in each application establishing the continuity.
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
Takeaway: To establish a supplier’s privity for standing purposes in a CBM review in relation to customers that have been sued for infringement, a supplier should present evidence tying the customers’ accused products to the supplier’s products as well as evidence showing the supplier’s obligation to indemnify its customers.
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
Takeaway: The Board may not authorize a motion to stay a proceeding where a filing necessitating the stay, such as a writ of mandamus to the Federal Circuit, has not yet been filed and where modifying due dates in the scheduling order could alleviate any prejudice to the moving party.
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
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.