In a decision last month, the Court of Appeals for the Federal Circuit gave petitioners in AIA proceedings yet another weapon to invalidate patents – by affirming a Patent Trial and Appeal Board (PTAB) decision that relied, at least in part, on new evidence introduced by the petitioner in its reply brief. (Genzyme Therapeutic Products LP v. BioMarin Pharmaceutical Inc., Fed. Cir. No. 15-1720).

Writing for a three-judge Fed. Cir. panel, Judge William C. Bryson said it should be expected that petitioners will introduce new evidence during the course of an Inter Partes Review (IPR) proceeding. Judge Bryson dismissed the notion that the record of an IPR is essentially closed following the PTAB’s institution decision.

“There is no requirement either in the board’s regulations, in the [Administrative Procedures Act] or as a matter of due process for the institution decision to anticipate and set forth every legal or factual issue that might arise in the course of the trial,” according to Judge Bryson.

Genzyme had argued that it was impermissible for the PTAB to relied on different evidence than the evidence relied upon in the institution decision.

“Genzyme’s argument that the institution decision must refer to every bit of evidence that is relied on by the board in its final written decision reflects a misunderstanding of the role of the institution decision in inter partes review proceedings before the board,” said the judge.

The opinion draws a distinction between new grounds for invalidity and new evidence that supports the grounds on which the trial was initiated.   According to Judge Bryson, if the PTAB decision is based on the same grounds, due process is satisfied as long as the opposing party is notified and given a chance to respond.
Continue Reading PTAB Can Rely on New Evidence Introduced by Petitioner in its Reply

Much has occurred during the first year after the America Invents Act (AIA) established several new procedures for the public to challenge issued patents and a new administrative court to hear these cases. Here are some observations on the first year of this evolving practice.

1. Many More IPR Petitions Have Been Filed Than CBM Review Petitions.

Although Congress expected the Covered Business Method (CBM) review process would be widely used by irate businesses tired of dealing with so-called “business method” patents, only 67 CBM petitions were filed during the first year compared to nearly 500 petitions for Inter Partes Review (IPR). Many practitioners thought the more expansive grounds for challenge in CBM review (permitting challenges based on prior public uses and sales as well as prior art publications) would have piqued more interest, especially in tandem with recent Supreme Court decisions roundly criticizing non-technological patent claims. However, IPRs have been more widely invoked, probably reflecting the much larger number of non-business method patents being asserted in litigation.

2. The PTAB is Quite Willing to Initiate IPR Proceedings when a Petition is Filed

Over 86% of the IPR petitions filed in the first year have been granted –at least in part.
Continue Reading Lessons From The First Year Of Post Grant Proceedings In The U.S.

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?

The new AIA post grant proceedings not only authorize depositions but also make provisions for deposing witnesses in a foreign language. Similar to rules that have governed foreign language depositions in PTO interference proceedings (37 C.F.R. 41.157(d)), the new AIA rules for inter partes review, post grant review and covered business method review (37 C.F.R. 42.53(d)) require that “[i]f an interpreter will be used during the deposition, the party calling the witness must initiate a conference with the Board at least five business days before the deposition.” Beyond that the rules provide little guidance as to how the foreign language deposition is conducted.

Recently, in Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, a PTAB panel was asked to confirm that the further guidance that has evolved in interference practice should be followed. Specifically, Isis asked the PTAB to adopt the guidelines set forth in Interference No. 104,539, Paper 54. In an order issued August 7, 2013 (IPR2012-00022, Paper 55), Judge Green did just that and set out twelve specific guidelines:
Continue Reading PTAB Issues Guidelines on Foreign Language Testimony

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