In an Inter Partes review (IPR) proceeding before the PTAB, a patent owner is not automatically afforded the right to amend the challenged claims. Rather, the patent owner has a burden of establishing that it is entitled to amend one or more of the challenged claims. 37 C.F.R. §42.20(c). To this end, the patent owner must first confer with the Board regarding a proposed motion to amend. After the patent owner receives the Board’s approval, it must file a motion to amend contemporaneous with or prior to the patent owner’s response. 37 C.F.R. §42.121(a)(1). The proposed amendments must be in response to a ground of unpatentability involved in the trial, and may not enlarge the scope of the original challenged claims. §37 C.F.R. 42.121(a)(2)(ii) and 35 U.S.C. §316(d).

In addition, the Board has held that the patent owner bears the burden of proof to demonstrate the patentability of the proposed claims, not only with respect to the prior art references on which the trial was instituted, but also over the prior art in general. Idle Free Sys., Inc. v. Bergstrom, Inc. (IPR2012-00027). The PTAB has explained that the requirement to distinguish the proposed claims over prior art in general does not mean that the patent owner is “assumed to be aware of every item of prior art presumed to be known to a hypothetical person of ordinary skill in the art.” Id. Rather, the patent owner should discuss, and present evidence (if appropriate), regarding the level of ordinary skill the art and what was known in the relevant timeframe about the features being relied on to demonstrate patentability of the proposed claims.

The requirement to show the patentability of the proposed amended claims over prior art in general has been an important factor in the Board’s repeated denial of motions to amend. In fact, the Board had not granted any motion to amend until last month when the Board granted the patent owner’s motion to amend with respect to certain challenged claims in International Flavors & Fragrances Inc. v. The United States of America (IPR2013-00124).


Continue Reading PTAB Grants a Patent Owner’s Request to Amend

Patent owners enforcing their rights who seek to exclude testimony about a pending administrative challenge to the patent-in-suit may face a Hobson’s choice – at least in Nevada. Particularly, the price for excluding evidence of pending administrative challenges to a patent may be a loss of the presumption of the patent’s validity in a district court trial.

In federal courts, judges may preclude evidence from being presented to a jury, particularly where the evidence has the potential to cause unfair prejudice. Such an opportunity is provided by Rule 403 of the Federal Rules of Evidence, which states that a court may exclude relevant evidence if its probative value is substantially outweighed by a danger of unfair prejudice, confusing the issues, misleading the jury, undue delay, wasting time, and/or needlessly presenting cumulative evidence.

Judges may use Rule 403 in patent infringement cases, particularly in cases where the patent in question is part of a concurrent reexamination proceeding in the Patent Office. In a recent ruling on a motion to preclude evidence concerning a concurrent reexamination of a patent, the District Court of Nevada held, consistent with precedent, that the evidence would be prejudicial, and therefore was inadmissible at trial. Server Technology, Inc. vs. American Power Conversion Corporation (3:06-CV-00698-LRH-VPC (D. Nev.)).

Particularly, District Court Judge Larry Hicks stated that the reexamination of the patent in question was not final, and that a final decision would not occur until long after the trial. Judge Hicks reasoned that the prejudicial effect of notifying the jury about the reexamination proceeding would influence the jury’s determination of the issues of infringement and invalidity. In addition, allowing the evidence would only confuse a jury because both the standard of proof and the applied claim construction by the Patent Office would be different from the standards to be applied at trial. Such differences, in addition to causing jury confusion, would also waste time and resources because it would be necessary to explain the differences to the jury.
Continue Reading What Should A Jury Be Told About A Concurent PTO Trial?

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

The USPTO’s final rules for petitions and motion practice impose limits on page lengths of various submissions in post grant proceedings under the America Invents Act (AIA). These rules are set forth in 37 C.F.R. 42.20 – 42.25. Perhaps most notable is the 60 page limit for petitions to initiate inter partes review and the 80 page limit on post grant review petitions in section 42.24. In addition, section 42.6 requires that all papers be double spaced and be in 14 point font characters. Although the rules provide for relief when necessary in “the interests of justice,” so far, the Patent Trial and Appeal Board (PTAB) has insisted upon strict adherence to the rules.
Continue Reading Beware of PTAB Rules Against Lengthy Submissions