November 2013

The United States Patent and Trademark Office (“PTO”) is quickly becoming a popular forum for parties who have been accused of patent infringement.  A defendant can challenge the validity of an asserted patent by filing a petition for inter partes review (“IPR”) with the PTO while the infringement suit is pending in another forum.  After filing an IPR, the potential infringer can move to stay the co-pending infringement suit pending a decision in the IPR.  To evaluate whether a stay will be granted, is necessary to consider in what forum the patent litigation suit is taking place.  Different forums use different approaches and may reach different results when determining whether to grant a stay.

Patent infringement suits are most often brought in the federal district courts under Section 281 of the US Patent Laws (35 U.S.C. § 281).  However, the United States International Trade Commission (“USITC”) also has limited jurisdiction to hear allegations of infringement.  Under Section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337), the USITC has jurisdiction to conduct investigations into allegations of certain unfair practices in import trade.  These practices include infringement of certain statutory intellectual property rights, including patent rights.  However, differences between federal court practice and ITC regulations lead to judges taking different approaches when considering whether to grant a motion to stay pending an IPR, potentially leading to different results.
Continue Reading Differing Approaches to Stays of Co-Pending Litigation

The new AIA procedures for administratively challenging issued patents afford the parties an opportunity to present their cases at a “final oral hearing” before the three Administrative Patent Judge panel that will decide the case.  This is true for inter partes review (IPR), covered business method (CBM) review and post grant review (PGR).  However, the Patent Trial and Appeal Board (PTAB) has resisted the temptation to expand of the scope final oral hearing beyond a plain and simple occasion for each side to provide the judges with a summation of their cases.  A recent decision November 5, 2013 in the case of Nichia Corporation v. Emcore Corporation (Case IPR2012-00005, paper 65) shows the PTAB’s reluctance to even permit the parties to play clips from video-taped testimony.

The PTAB trial practice guide clearly expresses the PTO’s policy on testimony at the final oral hearing:

The Board does not envision that live testimony is necessary at oral argument.  . . . A party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted. No new evidence or arguments may be presented at the oral argument.

However, the guide does also note that parties may file a motion for live testimony in appropriate situations and offers the suggestion that live testimony might be permitted: “where derivation is an issue, where misconduct is alleged to have occurred during the proceeding, or where testimony is given through an interpreter.”
Continue Reading PTAB Nixes Presentation of Video-Recorded Testimony at Oral Hearing as New Evidence

As we’ve previously discussed, the inter partes review (IPR) and post grant review (PGR) procedures in the USPTO allow for parties to take discovery.  Specifically, Rule 42.51 enumerates the permitted categories of discovery, including: (a) mandatory initial disclosures, (b) routine discovery and (c) additional discovery.  Of particular interest is a subcategory of routine discovery that requires a party to serve relevant information that is inconsistent with a position advanced by the party.

Rule 42.51(b)(1)(iii) requires that “[u]nless previously served, a party must serve relevant information that is inconsistent with a position advanced during the proceeding concurrent with the filing or documents or things that contains the inconsistency.  This requirement does not make discoverable anything otherwise protected by legally recognized privileged such as attorney-client or attorney work product.  This requirement extends to inventors, corporate officers and persons involved in the preparation or filing of the documents and things.”
Continue Reading What Is Inconsistent Information and When Must Such Information be Disclosed?