Fish & Richardson Principals Dorothy Whelan and Karl Renner, Co-Chairs of the firm’s Post-Grant practice, were recently interviewed by The Metropolitan Corporate Counsel on the topic of emerging trends and issues in post-grant strategy.
On September 30, 2014, the PTAB published guidance about discovery in AIA proceedings in a new article written by Administrative Patent Judges Jacqueline Bonilla and Sheridan Snedden. The article explains the difference between routine discovery and additional discovery. It also walks through the considerations that the Board takes into account in deciding whether to grant motions for additional discovery. The full article can be found here, and can also be seen in reproduced form by clicking below.
Written by Stuart Nelson.
Requests for rehearing of Patent Trial and Appeal Board decisions are rarely granted. Requests for rehearing are authorized under 37 C.F.R § 42.71(d), which states:
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”
Thus, the request must identify a matter that was “misapprehended or overlooked” and must also show where that matter was previously addressed in a paper. See 37 C.F.R § 42.71(d). Failure to do so can be fatal to a request for rehearing.
Written by Stuart Nelson.
Recently in Int’l Sec. Exch., LLC v. Chicago Bd. Options Exch., Inc., the Board ordered “additional discovery” sought under 37 CFR § 42.51(b)(2)(i). IPR2014-00097, Paper 20 at 3. Motions for “additional discovery” are rarely granted (see e.g. CBM2013-00042, Paper 32; IPR2013-00411, Paper 41; IPR2013-00534, Paper 41), because additional discovery is ordered only “in the interests of justice” (37 CFR § 42.51(b)(2)(i)). The Board typically applies a series of factors from the Garmin v. Cuozzo decision (IPR2012-00001, Paper 26 at 6-7) to determine whether additional discovery is in the interests of justice.
July 17, 2014
You are, or have been, sued in district court for patent infringement. It is highly likely that you, or your counsel, are considering filing a petition for post-grant review (e.g., inter partes review (IPR) or covered business method (CBM) review). With a year and a half of post-grant review proceedings behind us, a number of strategies for avoiding post-grant proceeding pitfalls have emerged. For instance, while the Patent Trial and Appeal Board promulgated a series of extensive rules to govern post-grant practice, not all “rules” are published. Those unpublished “rules” have developed over more than a year of PTAB practice and aid in the efficient resolution of post-grant proceedings. Below the fold are some tips and strategies to guide and remind both new and experienced PTAB practitioners.