Petitioners seeking to invalidate patents via the new AIA inter partes review (“IPR”) proceedings at the U.S. Patent and Trademark Office (PTO) appear to be increasingly willing to file multiple petitions against the same patent. In several instances, the same petitioner has filed three, four or even five petitions against a single patent. An explanation for this tactic may lie in the Patent Trial and Appeal Board (PTAB) practice of culling the grounds that will be considered when an IPR is initiated by invoking its vertical or horizontal redundancy rules. (For our prior articles on the PTAB redundancy rules, click here and here.) However, this phenomenon may also reflect the formidable “fire-power” that can be mustered by some challengers (often multinational corporations) against patent owners.

For example, in December 2013, Subaru (together with a host of other car manufacturers) filed five IPRs against U.S. Patent No. 6,324,463 (relating to cruise control indicators). In October 2013, Apple filed four IPR petitions against U.S. Patent No. 7,010,536 (relating to multi-user networking systems). Similarly, Microsoft filed four IPR petitions in May 2013 against U.S. Patent No. 6,724,403 (relating to graphical user interfaces). By asserting different grounds in separate petitions, these challengers were apparently trying to minimize the likelihood of dismissal of any of their asserted grounds for invalidity based on redundancy.


Continue Reading If at First You Don’t Succeed: File, File And File Again

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.

Recently, in Apple. Inc. v. Virnetx, Inc. and Science Application International Corp. (IPR2013-00348), the PTAB found another opportunity to interpret 35 U.S.C. §315(b), a statue of limitations on instituting inter partes review (IPR) proceedings.  Section 315(b) bars the institution of an IPR: if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging the infringement of the patent.

In this case, the petitioner (Apple) was served with a complaint alleging the infringement of U.S. Patent No. 6,502,135 in 2010 as well as in 2012.  The 2010 complaint was served more than one year from the date at which the IPR request was filed while the 2012 complaint was served less than one year from that date.  In its Decision on Institution, The PTAB ruled that the petitioner’s request to institute a trial was time barred because the 2010 complaint was served more than one year before the petitioner filed its request.

In a Request for Rehearing, the petitioner argued that its petition was timely because Section 315(b) should be read as allowing the institution of an IPR if it were filed less than one year after the date on which “any complaint” was served.  In other words, the petitioner had argued that “[t]he August 2010 complaint does not foreclose the present petition, “as the Patent Owner served a new complaint on Petitioner asserting infringement of the ‘135 patent in December of 2012.”  In its Decision on Institution, the Board had rejected this argument and had held that “under the plain meaning of  ‘a complaint’ under 315(b), the 2010 complaint qualifies as ‘a complaint’ that time bars the Petition.” 
Continue Reading The PTAB Rules That Time Bar of Section 315(B) Applies Even To Complaints Served Prior To Enactment of AIA

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 proverbial ink had barely dried on our first posting on this topic (noting that few parties in Inter Partes Review (IPR) proceedings had taken advantage of the settlement option) when we saw an outbreak of judgments terminating proceedings by mutual consent.  It seems that parties are indeed availing themselves of the provisions of the AIA that allow terminations without findings when they reach a settlement agreement.

On July 22, 2013, the PTAB terminated eighteen different IPR proceedings involving Oracle Corporation and Clouding IP, LLC. 
Continue Reading Are Peace and Love Breaking Out at the PTAB? – (Settlement of IPR Proceedings: Part 2)

In a number of IPR requests, the PTAB has relied on its authority to “deny some or all grounds for unpatentability for some or all of the challenged claims” to refuse to institute IPR based on certain invalidity grounds put forth by a challenger that the PTAB considered as cumulative relative to other grounds for which the review was instituted. 37 C.F.R. 42.108(b). The PTAB has reasoned that its denial for review of redundant invalidity grounds comports with the policy that the rules for conducting IPR proceedings be “construed to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.  42.1(b).
Continue Reading Too Much of a Good Thing: The Challenge of Being Comprehensive and Yet not Redundant