Between the Parties

IPR Blog for Interested Parties

Latest from Between the Parties

With the U.S. Patent and Trademark Office Trial Practice Guide update released last month, a significant change was made to the substantive filings. In the revised section II.I. (Sur-replies), the following language changes the rules: “Sur-replies to principal briefs (i.e., to a reply to a patent owner response or to a reply to an opposition to a motion to amend) normally will be authorized by the scheduling order entered at institution.” TPG, p. 14. The…
The recent decision in SAS Institute v. Iancu — in combination with the proposed shift from a broadest reasonable interpretation (BRI) standard to the Phillips standard for claim construction used in district court — moves trials at the U.S. Patent Trial and Appeal Board toward being the most likely forum for first consideration of claim construction and patent validity, and perhaps a shift toward becoming a truer “alternative” to litigation, as Congress envisioned under the America…
In a much-anticipated decision, the U.S. Supreme Court held Tuesday in Oil States Energy Services v. Greene’s Energy Group, that inter partes review does not violate Article III or the Seventh Amendment. Justice Clarence Thomas wrote for the seven-justice majority, and Justice Stephen Breyer wrote a concurrence, joined by Justices Ruth Bader Ginsburg and Sonia Sotomayor. Justice Neil Gorsuch penned the dissent, in which he was joined by Chief Justice John Roberts, whose dissent was…
The recent decision in General Plastic Industrial Co. v. Canon Kabushiki Kaisha denying the petitioner’s requests for a rehearing provided a “baseline” of factors to be considered as to the limited circumstances when second — or “follow-on” — petitions are likely to be successful in Patent Trial and Appeal Board trials. The petitioner in General Plastic filed two inter partes review petitions, each challenging one patent. The PTAB denied institution on the merits. The petitioner then sought rehearing, which was denied.…
The recent Patent Trial and Appeal Board decision in General Plastic Industrial v. Canon Kabushiki Kaisha (PTAB September 6, 2017; Paper 19) has caused many commentators to note that patent owners should be pleased with the decision as favorable to them. Indeed, the PTAB articulated that “multiple, staggered petition filings, such as those here, are an inefficient use of the inter partes review process and the Board’s resources.” However, historically less than 50% of follow-on…
As we mark the fifth anniversary of the effective date of Patent Trial and Appeal Board trials on September 16, we find that the early years of the practice have been a learning experience both for the PTAB and for PTAB practitioners. The PTAB had some initial growing pains when the new procedures began, with the number of petitions received far exceeding the number expected. The U.S. Patent and Trademark Office requested and received much…
Judge Sue L. Robinson of the U.S. District Court for the District of Delaware recently identified a logical fallacy in the “statutory estoppel” jurisprudence with respect to 35 U.S.C. § 315(e)(1). According to the statute, a petitioner of an IPR that results in a final decision will be estopped from asserting invalidity in a civil action based on “any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. §…
During the first three years of implementing the America Invents Act (AIA), Patent Trial and Appeal Board (PTAB) decision-making created a perception that a patent owner’s ability to amend claims during a post-grant proceeding was limited, at best. In 2015, legislative activity began to address this perceived problem with draft amendments to the patent statute. While specific proposals varied, the concept of one approach was that a patent owner seeking to amend claims during a…
In the most recent action in Depomed, Inc. v. Purdue Pharma LP, a patent infringement case involving pain reliever OxyContin, Purdue Pharma asked the U.S. District Court for the District of New Jersey to confirm that certain of the defenses it raised under 35 U.S.C. §§ 102 and 103 remained after a decision in the inter partes review (IPR) proceedings pertaining to the same patent. Depomed offered several theories to prevent Purdue from pursuing…
The “hybrid” procedure of inter partes review has been considered since its inception by some to be litigation at occurs at the patent office, rather than in district court.  The designation of IPRs and other procedures as “patent office trials” by the America Invents Act (AIA), as well as adherence to the Federal Rules of Evidence (FRE) in many instances helped contribute to this sentiment.  However, in Cuozzo Speed Technologies, LLC v. Lee, No. 15-446…