Fish & Richardson - News and Events
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News & Events


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.”

April 28, 2014

PTAB First! CBM Review Denied on Jurisdictional Grounds

Written by John Phillips

Experian Marketing Solutions, Inc. v. RPOST Communications Ltd, CBM2014-00010, Paper No. 20 (PTAB Apr. 22, 2013)

In a first for the Patent Trial and Appeal Board (“PTAB”), the Board found a patent challenged under the Covered Business Method (“CBM”) Review procedure to be ineligible for review because Petitioner failed to establish that the challenged patent did not claim a “technological invention.”  This decision is notable because it marks the first time in 69 CBM institution decisions from inception of CBM review to date that the Board has found a challenged patent ineligible for CBM review.

April 28, 2014

Federal Circuit Takes Narrow View of Its Ability to Review PTO Decisions Regarding Whether to Institute Inter Partes Review

Written by Craig Countryman

The Federal Circuit recently decided three cases in which it took a narrow view of its ability to review the PTO’s decision regarding whether to institute an inter partes review. In the lead case, St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., __ F.3d ___, 2014 U.S. App. LEXIS U.S. App. LEXIS 7731 (Fed. Cir. Apr. 24, 2014), the Federal Circuit held it had no jurisdiction to hear St. Jude’s appeal challenging the PTO’s decision to deny an IPR request based on 35 U.S.C. § 315(b), which states that IPR “may not be instituted” if the request is filed over a year after the petitioner is “served with a complaint” alleging patent infringement.

April 15, 2014

USPTO Hosting PTAB AIA Trial Roundtable Sessions in Select Major Cities April 15 – May 8

The USPTO-hosted PTAB AIA Trial Roundtable road show will kick off in Alexandria, Virginia, on April 15. These roundtables will share information about the new AIA trials (inter partes reviewspost-grant reviewscovered business method reviews, and derivations), including statistics, lessons learned, and techniques for successful motions practice.

To see the full agenda and for more details, visit the PTAB AIA trial roundtables event page.

April 11, 2014

Fish’s Post-Grant Co-Chairs to Speak at USPTO’s PTAB AIA Trial Roundtables

Fish post-grant practice co-chairs, Dorothy Whelan and Karl Renner, will speak at 2 of the upcoming PTAB AIA Trial Roundtables over the coming months. These sessions are described by the USPTO as:

The Patent Trial and Appeal Board of the United States Patent and Trademark Office is hosting roundtables to share information about the new AIA trials (i.e., inter partes reviews, post grant reviews, covered business method reviews, and derivations) including statistics, lessons learned, and techniques for successful motions practice. The Board is interested in receiving feedback about the trials and will feature a panel discussion to elicit public input. At each roundtable, at least five administrative patent judges will participate and be available for questions and conversation.

Dorothy Whelan will participate in the Chicago roundtable on April 22, and Karl Renner will participate in the Detroit roundtable on April 24.

Click “Read more” for more information on each of the scheduled roundtables, or visit the USPTO’s website by clicking here.

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