July 2013

As discussed in Part 1, unlike in reexaminations, in an inter partes review, a protective order is available to parties seeking to keep their confidential information sealed from public view.

Despite the availability and relative ease of putting a protective order in place, relatively few parties have chosen to do so. In seventy-seven of the inter partes reviews instituted since the beginning of 2013 to date (based on petitions filed between September and December 2012) the parties have moved to seal documents in only six cases. Regardless, the parties to a proceeding should agree to a protective order early-on, so that an agreed-to protective order will be available if and when it is needed.


Continue Reading Protecting Confidential Information at the PTAB – Part 2

The administrative proceedings for challenging patents, including new proceedings enacted by America Invents Act (Inter Partes Review, Post Grant Review, and Business Method Review), can be potent tools for exerting considerable leverage against patentees.  A third party can use these proceedings to attempt to cancel and/or narrow the scope of a troublesome patent before any litigation is commenced.  Further, an accused infringer can take advantage of these proceedings after patent litigation has been initiated to cause significant uncertainty for the patentee.  
Continue Reading Reexamination Obliterates a $24 Million Verdict

When Congress enacted the America Invents Act (AIA) and created the new administrative proceedings for challenging patents (Inter Partes Review, Post Grant Review and Covered Business Method Review), the AIA provided an incentive for the parties to resolve their differences by settlement.  However, less than five percent of the Inter Partes Reviews (IPRs) filed last year have been settled “out-of-court” so far.
Continue Reading Hold’em or Fold’em? – So Far Patent Owners Show Little Interest In Settling IPR Proceedings

On June 27, 2013, Judge Zobel, in the District of Massachusetts, issued a post-trial order granting a permanent injunction, but stayed that injunction pending resolution of a co-pending reexamination before the Patent and Trademark Office. This case serves as an interesting study in balancing the factors for an injunction, and the effect a pending inter partes reexamination or inter partes review proceeding may have on that analysis.

The plaintiff, Smith and Nephew, Inc. (“S&N”) sued Interlace Medical, Inc. and Hologic, Inc. (collectively, “Hologic”) for infringement of two patents relating to arthroscopic surgical instruments and endoscopic cutting devices. After a ten-day trial, the jury found all the asserted claims valid and infringed.
Continue Reading Stay of a Permanent Injunction Pending

Although an “expert opinion” in the form of a declaration is not a mandatory part of a petition for patent review under the new AIA proceedings (i.e., inter partes review, CBM review or post-grant review), opinions of experts form an important part of the challenger’s case in many of the petitions filed to date.

There are many good reasons to make an expert “declarant” part of your team.  Since the principal issue in most review proceedings will be an inquiry into level of knowledge of a “person having ordinary skill in the art,” an expert can set the table by helping define the relevant art and level of knowledge expected by such a hypothetical skilled artisan.  Additionally, claim construction (the proper meaning of each limitation of the challenged claims) will typically be another important issue –and one where an expert can again bolster a petitioner’s case.
Continue Reading Using Experts in AIA Inter Partes Review Proceedings – Part 1

One of the many changes under the American Invents Act (AIA) is that documents submitted in proceedings before the Patent Trial and Appeal Board (PTAB) may be filed under seal (that is to say, excluded from public view). Protection for sensitive documents was unavailable for the pre-AIA inter partes reexamination proceedings, however, the AIA authorizes the Patent and Trademark Office (PTO) to keep confidential documents sealed during the new Inter Partes Review and Post-Grant Review proceedings. 35 U.S.C. §§ 316(a)(7), 326(a)(7).

Continue Reading Protecting Confidential Information at the PTAB – Part 1

On June 11, 2013, the Patent Trial and Appeal Board (PTAB) rendered its first decision in a case under the new AIA procedures for administratively contesting patents.  In the case of SAP America, Inc. v. Versata Development Group, Inc., CBM2012-00001, Paper 70 (June 11, 2013), the PTAB found Versata’s patent claims ineligible for patent protection because they were drawn to “abstract ideas.”

The petition for review was brought under the Covered Business Method (CBM) post grant review rules, which permit free-wheeling challenges to patents under essentially all grounds that are available (sections 101, 102, 103 and 112 of the US Patent Laws).  (Similar rules for non-business method patent will not kick-in until patents start issuing with effective filing dates on or after March 16, 2013.)

Interestingly, the same parties litigated this same patent (U.S. Patent No. 6,553,350 ) a few years ago in the Eastern District of Texas (Versata Software, Inc. v. SAP America, Inc., 2009 U.S. Dist. LEXIS 45751 at 16-18 (E.D. Tex. 2009)).  In the district court case, the patent was found valid and infringed – and Versata was awarded a $391 million infringement judgment.  Apparently, SAP had not raised the issue of patent ineligibility under 35 U.S.C. 101 during the jury trial.  The district court judgment was affirmed by the Court of Appeals for Federal Circuit (Versata Software, Inc. v. SAP America, Inc., 2013 U.S. App. LEXIS 8838; 106 U.S.P.Q.2d 1649 (Fed. Cir. 2013)).  The Federal Circuit will probably also wind up with an appeal of the PTAB decision since SAP had asked the Federal Circuit to stay the damage award and injunctive relief until the PTAB conducted its review.
Continue Reading PTAB Renders Its First Decision