October 2013

The new Inter Partes Review (“IPR”) and Post-Grant Review (“PGR”)  procedures are similar to district court litigation in many respects: there are opportunities for discovery, depositions, adverse motion practice, and a trial. As such, many participants in these proceedings may wish to retain experienced litigation counsel, who may not be registered to practice before the USPTO.

The regulation authorizing counsel to appear pro hac vice is 37 C.F.R. 42.10(c) and provides:

The Board may recognize counsel pro hac vice during a proceeding upon a showing of good cause, subject to the condition that lead counsel be a registered practitioner and to any other conditions as the Board may impose. For example, where the lead counsel is a registered practitioner, a motion to appear pro hac vice by counsel who is not a registered practitioner may be granted upon showing that counsel is an experienced litigating attorney and has an established familiarity with the subject matter at issue in the proceeding.

The Patent Trial and Appeal Board (“PTAB”) recently clarified the procedures for filing a motion for admission pro hac vice, in IPR2013-00639. First, the motion shall be filed no sooner than 21 days after service of the petition, when the patent owner must file their mandatory notices. Any opposition must be filed within seven days after the motion, and no reply is allowed unless authorized by the PTAB.
Continue Reading Stranger in a Strange Land – USPTO Clarifies Rules for Pro Hac Vice Admission

A patent owner in an inter-partes review (IPR) proceeding may amend a challenged patent if they satisfy a number of statutory requirements set forth by the AIA (America Invents Act) and the regulations promulgated by the USPTO.  In particular, the AIA states that “… the patent owner may file 1 motion to amend the patent in 1 or more of the following ways: (A) Cancel any challenged patent claim. (B) For each challenged claim, propose a reasonable number of substitute claims.” 35 U.S.C. 316(d).  The USPTO rules (42.121) state:

(a)  Motion to amend. A patent owner may file one motion to amend a patent, but after conferring with the Board.
(1)  Due date.  Unless a due date is provided in a Board order, a motion to amend must be filed no later than the filing of a patent owner response.
(2)  Scope.  A motion to amend may be denied where:
(i)    The amendment does not respond to a ground of unpatentability involved in the trial; or
(ii)   The amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter.
(3) A reasonable number of substitute claims.  A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.  The presumption is that only one substitute claim would be needed to replace each challenged claims, and it may be rebutted by a demonstration of need.


Continue Reading A Patent Owner Bears a Heavy Burden in Amending Claims in an IPR Proceeding

The addition of discovery to review proceedings before the Patent Trial and Appeal Board (PTAB), such as inter partes review, and post-grant review, have opened up the doors to new kind of challenges before the PTO.  However, attempting to receive additional discovery beyond that required by the rules in proceedings before the PTAB is not as easy as in District Court litigation.  In post-grant and inter partes proceedings, 37 C.F.R. §42.51(b)(2) provides the rules for additional discovery: parties are given the option to agree to additional discovery between themselves, and if they are unable to do so, the moving party must present a reasoning to the PTAB as to why the additional discovery is necessary “in the interests of justice.”  In post-grant reviews, the moving party is restricted even more because it must show that the additional evidence is directly related to factual assertions advanced by either party in the proceeding (See 37 C.F.R. §42.224).
Continue Reading No Fishing Allowed – Limits on Discovery Before the PTAB

Under the America Invents Act (AIA), parties to an Inter Partes Review (IPR) or Post Grant Review (PGR) may move to join pending IPR or PGR proceedings. See 37 C.F.R. § 42.122 (for IPR), and 37 C.F.R. § 42.222 (for PGR).

The regulations provide, in part:

(b) Request for joinder. Joinder may be requested by a patent owner or petitioner. Any request for joinder must be filed, as a motion under §42.22, no later than one month after the institution date of any inter partes review for which joinder is requested. The time period set forth in §42.101(b) shall not apply when the petition is accompanied by a request for joinder.

In addition to the efficiencies that come with consolidation of proceedings, a petitioner may use the joinder rules to get around the filing deadline laid out in § 42.101(b). The regulations prevent that party from filing a new IPRs and PGRs more than a year after the date the petitioner was served with a complaint for patent infringement. However, if that petition is filed with a motion to join a pending review proceeding, the petitioner can avoid that deadline. In order to take advantage of this, there must already be a pending proceeding (i.e. an earlier petition must have been timely filed and a instituted).
Continue Reading The More the Merrier – Joinder under the AIA