Category Archive: Evidentiary Challenges

Nov 11

Federal Circuit Weighs in on Evidentiary Challenge in IPR, Reversing PTAB

More often than not, evidentiary issues in IPR proceedings fail to make headlines because the Board will structure its Final Written Decision to avoid evidentiary challenges. Findings that a party’s motion to exclude is denied as moot are common. That makes the Federal Circuit’s decision in REG Synthetic Fuels, LLC v. Neste Oil Oyj (November …

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Jun 22

Federal Circuit Weighs in on Propriety of New Evidence Adduced During IPR Trial

In Genzyme Therapeutics v. Biomarin Pharma., the Federal Circuit considered what sort of notice and opportunity to be heard in an IPR will satisfy the Administrative Procedure Act (“APA,” 5 U.S.C. § 554(b) & (c)). Genzyme owns US 7,351,410 and US 7,655,226, which both concern methods of treating Pompe’s disease. When Biomarin petitioned for IPR …

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Mar 10

PTAB Grants IPR Motion to Exclude – Knocks Out Exhibits As Untimely

The Board rarely grants motions to exclude, but it did so in Toshiba Corp. v. Optical Devices, LLC, IPR2014-01447 (March 9, 2016).  There, Patent Owner moved to exclude four exhibits; the motion was denied as two of them and granted as to the other two.  Patent Owner objected to the two admissible exhibits (a data …

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Feb 04

Board Explains the Process for Evidentiary Objections—and Illustrates the Severe Penalty for Not Following It

Practitioners who are used to district court litigation may be surprised—and tripped up—by the rules for objecting to evidence in IPRs, which differ significantly from the approach used in litigation.  The Board’s Final Written Decision in IPR2014-01204 (Valeo v. Magna Elecs.) serves as a good case study of the IPR rules’ strict process for evidentiary …

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Nov 11

Board Offers New Technique to Solve an Often-Raised IPR Issue

One panel of the PTAB has introduced a technique that may help solve the oft-raised complaint that a reply brief from Petitioner contains new evidence and/or argument not raised in the Petition. In early decisions, when this issue arose, the Board would simply dismiss the complaint by stating that it would, upon consideration of the …

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Mar 06

Motion to Exclude is Proper Vehicle in IPR to Remove Reference as Evidence

Patent Owners have often made the argument that certain art of record in an inter partes review is not actually prior art. The proper way to remove that evidence from the record is via a Motion to Exclude, not merely by making arguments in a Patent Owner Response or at the oral hearing. This issue, …

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Nov 17

PTAB Reiterates Prohibition Against New Arguments at IPR Oral Hearing

One of the most litigated aspects of inter partes review proceedings is the issue of whether an argument presented in a petitioner reply or at oral hearing is “new.” This issue arose in Level 3 Communications, LLC v. AIP Acquisition LLC, IPR2013-00296, Paper 42, at 9-10, wherein the Board discussed what will and will not …

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Nov 05

Conclusory Arguments Plus Citation to KSR Insufficient to Institute IPR

The Board has instructed, time and again, that a Petition for Inter Partes Review must tell a story. Mere conclusory attorney argument, or conclusory statements from an expert, are not sufficient to carry the burden of demonstrating the unpatentability of a challenged claim. This lesson was learned again, the hard way, by a Petitioner in …

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Oct 23

Rare Grant (in Part) of an IPR Motion to Exclude

Motions to Exclude Evidence have been one of the features of inter partes review practice that have, to date, had a less significant effect than expected. Very few motions have been granted, largely because the Board constructs its Final Written Decisions so as to not rely upon any disputed evidence. As such, motions are often denied …

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Nov 14

Board Eschews Federal Circuit Claim Construction in Granting IPR Trial Requested by Google

In concise decision, Google was able to get 9 challenged claims of a Whitserve patent into a trial for inter partes review in a case styled as Google, Inc. v. Whitserve LLC (IPR2013-00249), involving U.S. Pat. No. 6,981,007. The ‘007 patent relates to a “system for backing up data stored on a central computer over …

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