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July 18, 2014

9 Common Pitfalls With Post-Grant Proceedings

July 17, 2014

This article first appeared on law360.com and can be downloaded as a PDF.
Written by Tim Riffe, Adam Shartzer, and Daniel Gopenko.

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 Those unpublished “rules” have developed over more than a year of PTAB practice and aid in the efficient resolution of post-grant proceedings.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.

July 1, 2014

USPTO Issues Request for Comments on PTAB Trials

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.

May 28, 2014

A Late Terminal Disclaimer Does Not Change the Claim Interpretation Standard

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.

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.