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March 23, 2016Newsletter

This Week at the Board - March 23, 2016

Federal Circuit Finds that Petitioner Relied on New Evidence at Oral Hearing in IPR

In a recent Federal Circuit decision, the Federal Circuit remanded an IPR back to the Board for further proceedings in view of new evidence presented at oral argument during the IPR. During oral argument in the IPR, the Petitioner referenced an element in a prior art figure. The Board ultimately relied on that element to find the claim unpatentable, even though the Petitioner had never referenced that element before in its previous filings. The Federal Circuit noted that the Patent Owner was entitled to provide evidence (e.g., expert, lay, documentary) about the element in the figure, and present arguments about what the element does or does not teach.

A link to the decision is provided here.

Request for Rehearing Granted Despite Arguments Not Being Raised in Patent Owner Preliminary Response

In a recent PTAB decision, the PTAB granted a request for rehearing of an institution decision in an IPR. The Patent Owner argued that certain dependent claims should not have been instituted, since the Board had decided not to institute the corresponding independent claim, and the Petitioner had relied on the same underlying combination of art for both the independent claim and the dependent claims. The Board agreed. The Board noted that it did not matter that the Patent Owner had not raised this issue in the Patent Owner Preliminary Response, since the burden of proof is on the Petitioner at the institution stage.

A link to the decision is provided here.

Federal Circuit Temporarily Stays IPR For First Time

For the first time since the inception of the America Invents Act, the Federal Circuit has temporarily stayed an IPR. The IPR was stayed after the Patent Owner in the case (VirnetX Inc.) filed a petition for mandamus requesting that the Court vacate the PTAB’s joinder of Apple Inc. to the IPR, which was instituted at the request of Mangrove Partners Master Fund Ltd. VirnetX argued that Apple was precluded from joining the review as a result of VirnetX’s successful infringement suit against Apple occurring more than 1 year prior to the petition for IPR. Both Apple and the USPTO have responded to the Federal Circuit order, arguing that VirnetX is using the petition as a delay tactic to affirm the damages ($625 million) found in the infringement suit before findings of validity, that challenging joinder determinations is barred, and that the use of mandamus review to challenge institution decisions is barred. VirnetX’s arguments have since been supported in amicus briefs filed by the Biotechnology Innovation Organization and Pharmaceutical Research and Manufacturers of America, which claim allowing Apple to join the petition will “invite further abuse of the IPR framework” by allowing petitioners to skirt the time bar through joinder.

A link to the decision is provided here.

District Court Clarifies that IPR Estoppel Does Not Apply to Cumulative or Redundant Prior Art if the Prior Art Could Not Reasonably Have Been Raised in the IPR

In a recent case in the District Court for the Northern District of Illinois Eastern Division, the defendant (LKQ Corporation) wished to introduce and use a prior art reference as a ground to invalide certain claims of the plaintiff’s (Clearlamp LLC) patent. The plaintiff argued, however, that this ground was cumulative or redundant of the prior art grounds that were instituted in the parties’ corresponding IPR, and asserted that § 315(e)(2) prohibited the defendant from using the ground in the District Court. The District Court disagreed, finding that the relevant inquiry of § 315(e)(2) is not whether the ground is cumulative or redundant of a ground that was instituted in the IPR but rather only whether the ground reasonably could have been raised in the IPR. The District Court looked to the legislative intent, noting that the legislature added the modifier “reasonably” to ensure that estoppel extends only to that prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover. In this case, the District Court found that the asserted prior art ground could not have reasonably been raised in the IPR, since a skilled searcher would not have been expected to find the prior art reference in question. Thus, the defendant was free to rely on the prior art reference in the District Court regardless of whether it was cumulative or redundant of the prior art grounds from the IPR.

A link to the decision is provided here.

Petitioner Fails To Establish Reference Was Publicly Available Before Critical Date

In IPR2014-01446, the PTAB concluded that petitioner failed to provide persuasive evidence to establish that a reference was publicly available before the critical date. Petitioner offered a datasheet that it obtained from the Internet as prior art in support of one of the grounds of unpatentability. Petitioner relied on a date printed on the document, a press release relating to a product allegedly related to the data sheet, and the testimony of its expert. The PTAB noted that the date on the document was insufficient to establish that it was available to the public as of that date. The PTAB rejected the press release because it related to a product rather than the data sheet. The PTAB found the expert’s testimony insufficient because he failed to provide any evidence to support the statement that “it stands to reason that the [datasheet] also was available in May 1998, as chip companies typically disseminate a datasheet when they introduce a new chip.” In addition, the PTAB stated that the expert lacked personal knowledge about the company’s business practices.

A link to the PTAB’s decision is provided here.

PTAB Requires Specific Showing Of Need To Cross-Examine Wayback Machine Declarant

In IPR2015-01453, the PTAB authorized the parties to file a Joint Motion for Authorization to Seek a Subpeona under 37 C.F.R. § 42.52(a). The patent owner desired to cross examine Mr. Butler regarding statements in the affidavit pertaining to technical criteria relating to the Internet Archive’s “crawlers,” and questioned how HTML files, image files and other linked files such as .pdf files, and respective capture dates were discerned by the crawlers. The PTAB warned the parties that a motion to exclude is not a vehicle to challenge the weight of the evidence. The PTAB also stated that it would not lightly grant a motion for a subpoena for cross-examination of a third party with respect to admissibility where counsel simply concedes that they do not understand how the Wayback Machine works.

A link to the PTAB’s decision is provided here.

UPCOMING EVENTS
Overview of Post-Grant Proceedings Under the America Invents Act

March 31, 2016
12:00 - 1:00 PM
Complimentary Webinar

Upcoming External Events
PTAB "Boardside Chat” Webinar Series
April 5, 2016
12:00 - 1:00 pm
Complimentary Webinar hosted by USPTO
Click here to read more

Past Editions of “This Week at the Board”

March 16, 2016 

March 9, 2016

February 25, 2016

February 18, 2016

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