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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.”

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.