Two recent decisions from the PTAB and Federal Circuit signal inter partes review (“IPR”) petitioners to be cautious of approaching too closely the one-year time bar set forth in 35 U.S.C. § 315(b). First, on August 14, 2018, the PTAB denied institution of a petition that had been filed more than one year after a related district court complaint had been mailed, but within a year from its receipt. Vizio, Inc. v. ATI Techs. ULC, IPR2018-00560, Paper 7 (PTAB Aug. 14, 2018). Then, on August 16, 2018, the Federal Circuit held that a complaint could trigger the one-year time bar even if that complaint had been dismissed without prejudice. Click-to-Call Techs., LP v. Ingenio, Inc., No. 15–1242, 2018 WL 3893119, at *4 (Fed. Cir. Aug. 16, 2018). These decisions reiterate the need for IPR petitioners served with a complaint to approach the one-year bar cautiously when deciding target IPR filing dates. Continue Reading Cautionary Tale to IPR Petitioners: Avoid Time Bar Pitfalls

The Patent Trial and Appeal Board issued two decisions in TC 1600 during the week of August 27-31, 2018.  The first decision denied institution of an IPR petition filed by Hologic Inc. (Hologic) against bioMérieux, Inc. (bioMérieux).  The second decision denied institution of a PGR petition filed by Rimfrost AS (Rimfrost) against Aker Biomarine Antarctic AS (Aker).  The decisions are as follows: Continue Reading PTAB Tech Center 1600 Round-Up: Week of August 27-31, 2018

On August 27, 2018, the Federal Circuit in Ericsson Inc. v. Intellectual Ventures I LLC, vacated the Patent Trial and Appeal Board’s (“PTAB”) final written decision in an inter partes review (IPR) and remanded for the PTAB to properly consider all portions of the petitioner’s reply.  No. 17-1521, slip op. at 13 (Aug. 27, 2018). Continue Reading Arguments in Reply that Expand on Previously Argued Rationale Should Be Considered by the PTAB

On August 13, 2018, the PTO published a public notice announcing the first update to the Office Patent Trial Practice Guide since its original introduction in August 2012. The update adds or substantially revises several procedural guidelines for trial proceedings—most notably, the Board will now permit sur-replies under the standard scheduling order in most cases. The update also addresses the role of expert testimony, motions to exclude and motions to strike, live testimony at oral hearing, and factors affecting the Board’s discretion to decline institution.

The August 2018 update to the Trial Practice Guide is available here, and the original 2012 Trial Practice Guide remains available here.

Details on key provisions in the Trial Practice Guide update are provided below. Continue Reading PTAB Issues Substantial Updates to the Patent Trial Practice Guide

During the week of August 6, the Board issued nine decisions in Technology Center 1600, two denying institution of IPR, two Final Written Decisions finding the challenged claims not unpatentable, two Final Written Decisions finding the challenged claims unpatentable, and two terminating inter partes review (“IPR”) proceedings, in whole or in part.  The decisions follow.

Continue Reading PTAB Tech Center 1600 Round-up: Week of August 6-10, 2018

We wrote previously regarding Incyte Corp. v. Concert Pharms., Inc., IPR2017-01256, in which the Board reached different conclusions regarding the availability of two pieces of prior art, over a dissent by Judge Fitzpatrick.  Regarding art referred to as the Concert Backgrounder, the Board’s earlier ruling found public accessibility where the Backgrounder was 1) identified on a cached WebCite page, 2) cited in an International Search Report for a patent application, and 3) used in a law review article that cited the WebCite page.  In a new decision in the same case, the Board ruled on Petitioner’s motion for additional discovery regarding public availability of the Concert Backgrounder, granting the discovery in part.  Interestingly, the Board declined to allow discovery that it viewed as changing the Petitioner’s theory of public availability of the art. Continue Reading Granting A Motion For Discovery, Board Bars Changes In Theory Of The Evidence