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 Those unpublished “rules” have developed over more than a year of PTAB practice and aid in the efficient resolution of post-grant proceedings.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.
Following from the recent Patent Trial and Appeal Board (PTAB) AIA Trial Roundtables, the USPTO has published a notice in the Federal Register seeking written input about the trials. The questions cover a variety of topics including claim construction, management of concurrent proceedings, and discovery. Click below to view the list of published questions, and to download the Request for Comments document.
Written by Stuart Nelson
In a recent decision in Amkor Tech., Inc. v. Tessera, Inc., the Patent Trial and Appeal Board declined to change the claim construction standard from the traditional “broadest reasonable construction” standard in response to a terminal disclaimer filed by the patent owner late in the proceeding. IPR2013-00242, Paper 129 at 12. Claim terms in an unexpired patent are analyzed using their broadest reasonable interpretation by the Board. Id. at 3. The patent owner had filed a terminal disclaimer with the goal of causing the disputed patent to be effectively expired such that the broadest reasonable interpretation standard no longer applies. Id. at 2, 5.