More from the PTAB: Prosecution Bars, CBM, and Motions to Exclude

July 9, 2014

In keeping with our goal of discussing topics of interest to practitioners, this month we discussed recent developments related to prosecution bars and CBM proceedings. We also explored the PTAB’s treatment of motions to exclude evidence.

Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
Andrew Patrick, Associate, Washington, DC
Ron Vogel, Associate, New York
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Webinar Summary

  • Motions to Exclude
    • Federal Rules of Evidence apply – same as in U.S. district court, but with USPTO duty of candor overlay
    • Timing of evidentiary objections
      • Evidence submitted prior to institution: objections must be served within 10 days
      • Post-institution: objections must be served with 5 days
      • Depositions: objections must be made during deposition
    • Evidentiary objection is a prerequisite to filing a subsequent motion to exclude the evidence
    • Motion to exclude may be filed without prior authorization from Board
    • Content:
      • Only to challenge admissibility of evidence (e.g., authenticity, hearsay, etc.); not to challenge sufficiency or weight of evidence
      • Must point out where objection was made
      • Must explain objection in detail
    • Only about 8% of Motions to Exclude have been granted
      • Board’s basic policy disfavors exclusion of evidence, similar to a U.S. district court in a bench trial
      • Examples of granted motions to exclude
        • Untimeliness – evidence submitted with reply but in fact supported original motion to amend (Scotts Company, IPR2013-00110)
        • Evidence supporting a new grounds of unpatentability (Corning Inc., IPR2013-00047)
    • Motion to exclude cannot be used as a surreply (e.g., to argue that a reply included new or improper arguments)
      • Correct procedure is to contact the Board to discuss remedies (e.g., get the Board agree not to consider improper portions)
  • Prosecution Bars
    • Basic concept is that prosecution counsel is walled from confidential information disclosed in counterpart litigation to prevent prosecution counsel from drafting claims on defendant’s confidential products / methods
    • Balance behind basic purpose of prosecution bar and need to coordinate strategies between IPR/CBM and counterpart litigation
      • Some District Courts have struck balance: litigation team members without access to confidential information may participate in IPR/CBM proceedings
      • Balance reflects realities of (i) need for coordination between post grant and litigation teams, and (ii) patent owner’s extremely limited opportunity to amend its claims
      • Query whether an agreement by patent owner not to file motion to amend would obviate need for prosecution bar?
  • Interesting CBM Development
    • Recently filed CBM petition in pharma context (“A computerized method of distributing a prescription drug”)
      • Query whether sufficiently “financial” to be CBM eligible
  • Statistics Update
    • IPR – over 1400 filed through June 2014
      • IPR has been instituted in most cases, but only on a subset of proposed grounds (as a consequence of Liberty Mutual redundancy doctrine)
        • PTAB is becoming more stringent on petitioner’s requirements of showing motivation to combine in proposed obviousness grounds
    • CBM – 187 through June 2014
      • Similar grant stats as IPR
    • Final Written Decisions (FWDs) – 85 IPR and 11 CBM issued to date
      • Almost all claims found unpatentable (except, e.g., Corning and TRW FWDs)
      • Only motion to amend claims granted to date (and that one was unopposed)
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