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News & Events


May 27, 2014

PTAB Grants the First Motion to Amend

Written by Dorothy P. Whelan and W. Karl Renner.

International Flavors & Fragrances Inc. v. The United States of America, IPR2013-00124, Paper No. 12 (PTAB May 20, 2014)

The International Flavors decision marks the first time that the Patent Trial and Appeal Board (PTAB) has granted a patent owner’s motion to amend in an inter partes review (IPR) proceeding. The decision follows suggestions from the PTAB that motions to amend, if done properly, can succeed in limited circumstances.

May 22, 2014

Sur-Replies Can Be Permitted in Post-Grant Proceedings

Written by Stuart Nelson

Recently in Apple Inc. v. Sightsound Tech., LLC, the Board authorized the patent owner to file a sur-reply to address an obviousness ground raised for the first time in petitioner’s reply. CBM2013-00020, Paper 100 at 2. In another case this month, Amneal Pharm., LLC v. Endo Pharm. Inc., the Board authorized both a reply and a sur-reply to address allegations in the preliminary response of a time-barred petition under 35 U.S.C. ¶ 315(b). IPR2014-00360, Paper 9 at 2-3.

May 8, 2014

Claim Interpretation for Expired Patents

Written by Stuart Nelson

Claim construction is a key issue in post-grant proceedings, and the application of the “broadest reasonable construction” standard is receiving increased attention. Recently in Amkor Technology, Inc. v. Tessera, Inc. (IPR2013-00242), the patent owner filed a terminal disclaimer such that the disputed patent would be effectively expired. Order, Apr. 14, 2014, p. 3. The patent owner argued that while the broadest reasonable construction applies to unexpired patents in inter partes review, claims of an expired patent should be interpreted with an analysis similar to that of a district court. Id. at 2. The patent owner now seeks “to file a motion to terminate the proceeding on the basis that the Board applied the broadest reasonable interpretation standard in the decision to institute this inter partes review.” Id. at 2. It should be noted that the patent owner’s position is not that the proceeding should be terminated simply because the patent is now expired, but because the proper claim construction has now changed. The petitioner opposes and the Board has requested detailed briefing on what it considers an issue of first impression. Id. at 3-4.

May 6, 2014

PTAB AIA Trial Roundtables in Final Week – Hear from Fish Participants on May 14th

From the USPTO:

“The Patent Trial and Appeal Board (PTAB) is concluding their AIA Trial Roundtable series this week with final stops in Dallas on Tuesday, May 6 and Denver on Thursday, May 8. Hundreds of stakeholders have attended the roundtables so far in Alexandria, New York City, Chicago, Detroit, Silicon Valley, and Seattle, and there is still an opportunity for you to do so too. The Denver program will be webcast live on May 8 starting at 1 pm MDT.”

Fish attorneys Dorothy Whelan and Karl Renner participated in the roundtables in Chicago and Detroit respectively, and will share their experiences and insights during the next Post-Grant for Practitioners webinar on May 14th, 2014. To register, click here.

April 29, 2014

Excluding Reply Declarations and Evidence

Written by Stuart Nelson

In post-grant proceedings, one issue that commonly arises is what evidence is permissible to file with replies. In Berk-Tec LLC v. Belden Technologies Inc. (IPR2013-00057), the Patent Trial and Appeal Board discussed the issue of a new reply declaration and 19 exhibits being filed by a petitioner that filed no declaration with the initial petition. Order, Sept. 10, 2013, p. 1-2. The Board refused to decide the issue on a conference call, explaining that “a trial within a trial will not be held.” Id. at 2. The Board also explained that “it is not the test for determining appropriateness of a Reply merely to see whether information was previously available to Berk-Tek and could have been submitted with its Petition,” but rather:

“Much of the analysis centers on the scope and content of Belden’s Patent Owner Response, in addition to whether the issue was one Berk-Tek sufficiently addressed without a supporting declaration in its Petition. It also would be unreasonable to expect a Petitioner to submit supporting testimony for every matter that possibly may be involved in a dispute. On the other hand, factual disputes which reasonably should have been anticipated may require supporting testimony.”

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