New Inter Partes Review Fee Structure In Effect


The new inter partes review proceeding may have just gotten even more attractive to potential patent challengers in light of a revised fee structure implemented by the Patent Office, effective January 18, 2013.  In general, the Patent Office has lessened the risk of filing an inter partes review by breaking the costs associated with such a filing into two discrete segments – one fee for filing, and another fee to be paid only if an inter partes review trial is instituted.

More specifically, under the original rules, the Patent Office fee to file a petition seeking inter partes review was $27,200 for up to 20 claims (with a $250 per claim fee for each claim in excess of 20 claims).  That fee was due upon filing of the petition and no refund is provided if the inter partes review proceeding was not ultimately instituted.

The fees charged by the Patent Office were originally calculated with an eye toward covering the actual costs the Office anticipated incurring in handling an inter partes review – both in terms of administrative costs, as well as the time the Administrative Patent Judges would have to spend on each filing. To better align the costs to be incurred with inter partes review practice, however, the Office apparently recognized that there will be instances in which petitions are not granted, lessening the anticipated burden on the Office.  That cost savings will now be passed along to the patent challenger.

Under the new rules, when a petition seeking inter partes review is filed, the cost is broken up into two parts:

  • Filing Fee: $9,000 for up to 20 claims ($200 per claim for each claim in excess of 20)
  • Institution Fee: $14,000 for up to 15 claims ($400 per claim for each claim in excess of 15 claims made part of the inter partes review trial)

This change will, if anything, further incentivize use of the IPR process because the risk has been lessened for patent challengers.  They only risk a $9,000 filing fee with their petition, instead of the full $27,200 fee required under the old rules.  This continues a trend – making these proceedings as easily accessible as possible to provide an effective, inexpensive option to district court litigation for patent challengers.


PTAB Handles First Inter Partes Review “Initial Conference Call”

On Tuesday, January 22, 2013, the PTAB held its first “Initial Conference Call” in an inter partes review, in the case of Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026 (Harness Dickey represents the Patent Owner, Proxyconn, in this matter).  The format of the call was very similar to a Rule 16 Conference before a federal district court judge.  At the outset of the call, the Board clarified certain filings that had occurred in the case, and then proceeded to address the expected formalities of the upcoming trial, including:

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]Office Patent Trial Practice Guide at 48765 — “The Board expects to initiate a conference call within about one month from the date of institution of the trial to discuss the Scheduling Order and any motions that the parties anticipate filing during the trial.”[/pullquote]

1) Whether the proposed scheduling order was agreeable to the parties;

2) Whether the form Protective Order set forth in the Trial Practice Guide was agreeable to the parties;

3) Whether “Initial Disclosures” were exchanged between the parties, or expected;

4) Whether compelled discovery was expected;

5) What motions each party expected during the trial (including, with respect to certain of the motions identified by the parties, what the party expected to include in the motion); and

6) Whether the parties had discussed potential settlement.

The Board also handled questions and clarifications from the parties and otherwise cleared the deck of all outstanding issues before the next phases of the inter partes review proceeding are to take place.  In sum, the approximately 30 minute phone conference was very reminiscent of an Rule 16 conference in district court litigation and parties should be prepared to address similar topics in an inter partes review “Initial Scheduling Conference.”

Multiple Back-Up Counsel Allowed in Inter Partes Review

Despite the wording of 37 CFR § 42.10, as well as the accompanying comments thereto, that seem to limit parties to a single back-up counsel, the PTAB has recently granted concurrent pro hac vice motions that allow a patent owner to have two back-up counsel participate in a single Inter Partes Review proceeding.  It remains to be seen whether the PTAB will or will not place a restriction on the number of back-up counsel that are able to participate in an IPR.

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]37 CFR § 42.10(a) – “If a party is represented by counsel, the party must designate a lead counsel and a back-up counsel who can conduct business on behalf of the lead counsel.”[/pullquote]

More specifically, the express wording of § 42.10 seems to suggest that only a single lead counsel and single back-up counsel is allowed in any Inter Partes Review proceeding.  Further, the comments accompanying the rule only reinforce this limitation.  To that end, one of the comments to the proposed Trial Practice Rules contained a proposal for multiple back-up counsel.  In response, the Patent Office stated only one lead and one back-up counsel would be required in any proceeding:

The comment suggesting multiple back-up counsel is not adopted.  Based on the experience of the Office in contested cases, designating one lead counsel and one back-up counsel by each party should result in more efficient and effective case management.  “Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial review of Patent Trial and Appeal Board Decisions; Final Rule,”  77 Federal Register 157 (14 August 2012), p. 48630.

The imposition of such a limitation could be, in some circumstances, unduly burdensome to parties in an Inter Partes Review proceeding.  Given the schedules of busy attorneys, as well as the potential in Inter Partes Review and Post Grant Review proceedings of multiple depositions within an abbreviated 3 month discovery period, having the ability to designate more than one back-up counsel could be advantageous and reasonable.

Despite the limitation in § 42.10 and the accompanying comments to a single back-up counsel, however, the PTAB recently granted two motions for pro hac vice admission in the ongoing IPR styled as Nissan N. Am., Inc. v. Carl B. Collins and Farzin Davanloo (IPR2012-00035). In that case, therefore, the PTAB tacitly over-ruled § 42.10 by allowing two separate back-up counsel.  The Board’s Order speaks of the patent challenger having “shown good cause why [counsel] should be recognized pro hac vice for purposes of this proceeding,” but the Order does not discuss whether good cause was shown to admit two separate back-up counsel.  Indeed, the issue was avoided entirely by virtue of the fact that the grant of the motions for pro hac vice admission were made in two separate Orders.

It is also interesting to view this order in light of a Notice of Defective Petition entered in Midland Radio Corp. v. Anthony Mirabelli (IPR2013-00021) wherein the PTAB stated that the Midland Radio Petition was defective because it listed as back-up counsel “all counsel” associated with a particular PTO customer number.  The PTAB instructed that “Per 37 CFR § 42.10(a), ‘the party must designate . . . a back-up counsel who can conduct business on behalf of the lead counsel.’” (emphasis in original).  Thus, to receive a filing date for its petition, Midland Radio filed an amended petition that listed only a single back-up counsel.

In the end, time will tell whether two or more back-up counsel will be allowed on regular basis, or whether the Board will continue with its early practice in other contexts of sticking to the letter of the Trial Practice Rules.

PTAB Does Not Tie Inter Partes Review With Related, Pending Applications

The PTAB has issued its second order regarding the consolidation of related “proceedings” in the two companion Inter Partes Reviews brought by Chi Mei Innolux Corp. (CMI) against two patents owned by Semiconductor Energy Laboratory Co. (IPR2013-00028, IPR2013-00038).  In each case, CMI moved to have the PTAB either (1) take jurisdiction over, and suspend prosecution of, an application that claims priority from the patent at issue in the IPR; or (2) review and authorize any further patent filings, claim amendments, etc.  More specifically, CMI argued that the pending (or future) applications may be used to present claims that are patentably indistinct from those at issue in the IPR.  The Board denied the motion, finding that 37 CFR § 42.3(a) (relating to inter partes review jurisdiction) does not require it to take jurisdiction over the related applications and, further, that the patent examiner is in just as good, if not better,  position to review the pending claims vis-à-vis the IPR.  As such, it is not necessary for the Board to review any filings or proposed claim amendments in related patent application(s).

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]37 CFR § 42.3(a) – “The Board may exercise exclusive jurisdiction within the Office over every involved application and patent during the proceeding, as the Board may order.”

37 CFR § 42.2 – “Involved means an application, patent, or claim that is subject of the proceeding.”[/pullquote]

More particularly, the Board pointed out that § 42.3(a) states that the Board may exercise exclusive jurisdiction over “involved” patents or applications.  But, § 42.2 defines “involved” patent as meaning the patent that is the subject of the proceeding and “involved” application as meaning an application that is subject of a proceeding, such as a derivation proceeding.  Order at 2.  The pending, or future, application(s) that claim priority to the patent that is subject of the IPR are not “involved” and there is, therefore, no requirement that the Board take jurisdiction over such application(s).

The Board further declined to review and authorize any filings or claim amendments in any current or future patent prosecution matters.  Such relief would require the Board to be a “gate keeper” for all papers and CMI did not explain why the Board should take on the gate keeper function.  As has become its practice, however, the Board does drop a hint regarding what it may take to convince it to take such action, stating that CMI “has not explained how the claims present in the…application are patentably indistinct from the claims involved in the [subject] patent.” Order at 3.  A patent challenger seeking to obtain the relief sought by CMI in these inter partes review proceedings should attempt to make such a showing – providing a detailed account of how the pending claims are patentably indistinct from the claims at issue in the IPR.

The Board also pointed out that the examiner handling the application(s) is in as good of a position to consider the relative scope of the pending and IPR claims.  For example, “[i]f the examiner makes a determination that the claims of the application are patentably indistinct from the [subject] patent claims, then the examiner can suspend the application pending the outcome of this proceeding.”  Order at 3.

In the end, the Board denied exercising jurisdiction over pending or future patent applications, but did instruct that its ruling be placed in the administrative records of the pending application to put the examiner in that prosecution on notice of the ruling.

Inter Partes Review and Post Grant Review Are Game-Changers

Originally posted on January 8, 2013 on IP Law360.

Inter partes review (IPR) and post-grant review (PGR) “trials” at the U.S. Patent and Trademark Office have the potential to be game-changers in the way patents are challenged in the future. After several attempts at creating USPTO-based proceedings that are efficient and effective, there is much in the new IPR and PGR that lend credence to the notion that Congress finally hit on a combination of pure patent litigation and USPTO procedure that will be attractive to patent challengers. Patent owners are already gearing up to defend against these proceedings, knowing the advantages they present for patent challengers.

That is not, however, to say that IPR/PGR proceedings will be commonly filed and serve to weed out many “bad” patents, along the lines of European opposition practice. Their high cost (as compared to prior USPTO proceedings and EU opposition practice), as well as the strong estoppel that attaches upon the conclusion of the proceedings, will ensure that patent challengers will carefully pick and choose their opportunities to file IPR/PGR petitions.

For significant disputes between patent owners and alleged infringers, however, where litigation is pending, threatened or expected, inter partes review and post-grant review may become the norm. For at least the five reasons below, these proceedings have the potential to change the face of patent litigation forever.

1) Keep Control of Your Best Prior Art Via Pseudo-Litigation

Among the main attractions of the new inter partes review and post-grant review proceedings are their pseudo-litigation features. As compared to previous attempts by Congress to create cost-effective proceedings for challenging patent validity, via IPR/PGR, patent challengers can be more confident that they will remain in control of their best prior art, instead of throwing that art over the wall for the USPTO to handle (or mishandle), without the type of control and input that a patent challenger is used to in federal court litigation.

Principal among those pseudo-litigation features, include: (1) the ability to take discovery, (2) the extensive use of experts (to include their depositions), (3) the ability to make challenges to evidence (pursuant to the Federal Rules of Evidence), and (4) access to subpoena power to compel discovery from third parties. Indeed, even Rule 26(a)(1)-style initial disclosures and scheduling orders with strict deadlines are required by the Trial Practice Rules before the Patent Trial and Appeal Board.

In addition to these pseudo-litigation features, IPR/PGR has the potential to function as a mini-claim construction phase in an ongoing patent dispute. At threshold, like prior USPTO proceedings, claim terms in inter partes review and post-grant review proceedings will be given their broadest reasonable interpretation, consistent with the specification. Pursuant to this standard, reasonable disagreements regarding the scope of a particular claim limitation will be resolved in favor of assuming that the limitation is broadly construed. This standard, of course, is more likely to result in a finding of unpatentability as compared to a district court proceeding where such reasonable disagreements will default to a reading of a claim limitation that preserves validity.

But Congress has directly injected claim construction issues into inter partes review and post-grant review proceedings, as evidenced by the fact that each petition seeking IPR or PGR is required to set forth the petitioner’s claim construction position. The petitioner may simply state that the terms are to be given “their broadest reasonable interpretation in light of the specification.” But, strategic opportunities exist to raise specific claim construction issues in the petition that may force the patent owner to begin talking, in detail, about the scope of particular claim terms. Any such statements will, undeniably, find relevance in later claim construction arguments in federal court proceedings. For example, this strategy may be invaluable for a group of defendants facing the same patent(s) — claim construction statements in an IPR by the patent owner can ripple throughout many pending lawsuits.

Notably, for means or step-plus-function claims, more specificity is required in the petition. If a challenged claim has a means-plus-function limitation, the petition must also contain the specific portions of the specification that describe the structure, material or acts corresponding to each claimed function. It seems especially likely that, when 35 U.S.C. §112(f) limitations are at issue, a patent owner is going to be put in the uncomfortable situation of putting claim construction positions on the record.

In any event, by directly addressing claim construction issues in these proceedings, patent challengers have an opportunity to get patent owners to start talking about claim scope in a manner that may impact litigation positions, including later Markman proceedings.

2) Allure of a Low Burden of Proof and Broader Classes of Validity Challenges

Patent challengers will find the burden of proving a patent claim unpatentable in IPR/PGR to be an attractive alternative to federal court litigation — “preponderance of the evidence” before the Patent Trial and Appeal Board versus the “clear and convincing evidence” standard of district court litigation. Relatedly, some challengers may find value in avoiding juries that tend to have a higher degree of respect for patents than that of an administrative patent judge. While not technically a change, as compared to reexamination practice, the above factors will bias patent challengers toward IPR/PGR proceedings. This is especially so when highly technical arguments are presented or invalidity is a close call.

Further, the post-grant review proceeding gives patent challengers access to a much larger set of grounds for establishing unpatentability. Patentable subject matter challenges (§101), written description and enablement challenges (§112), as well as non-documentary prior art challenges, such as prior uses and sales (§102 and §103) are all possible under PGR practice. Indeed, under many circumstances, patent challengers will conclude that the PTAB is better situated to consider complicated §101 or §112 challenges, as compared to most district courts.

3) Short Timeline and Quick Litigation Stays

The streamlined nature of IPR/PGR proceedings are already proving to be attractive to district court judges considering stay requests from defendants in patent infringement lawsuits. Per the AIA, from the date of filing of a petition seeking inter partes review or post-grant review, a final, written decision must be rendered no later than 18 months (with the ability to extend the deadline up to six months). That 18-month timeframe may be shortened if the patent owner chooses to either waive its ability to file a preliminary patent owner statement or files such statement in less than the three months otherwise allowed. In addition, that time frame may be shortened if the Patent Trial and Appeal Board takes less than its allotted three months to decide whether to institute a trial.

At least one district court judge (Judge Joan Lefkow, Northern District of Illinois) granted a motion to stay within days of the filing of a petition seeking IPR, and without allowing any opposition briefing from the patent owner. District court judges, seemingly always willing to lessen the burden of their dockets, are likely to find the short, definitive timeline of IPR/PGR proceedings to be meaningful in determining whether to institute a stay of litigation. Patent challengers will be biased toward instituting inter partes review or post-grant review proceedings if the likelihood of getting a very early stay increases as compared to the protracted inter partes reexamination timelines.

4) Patent Owner Estoppel and Limited Ability to Amend

For patent owners with pending continuation applications, the novel patent owner estoppel provisions of IPR/PGR proceedings are significant. Per the Trial Practice Rules, a patent applicant or owner is precluded from taking action in a later proceeding that is inconsistent with an adverse judgment in an IPR/PGR. For example, a patent owner may not obtain a claim in a later patent application that is patentably indistinct from a finally refused or canceled claim.

Relatedly, one of the drawbacks of prior USPTO proceedings to challenge patent validity was the ability of the patent owner to draft virtually unlimited numbers of new claims to avoid the subject prior art, yet still get patent claims that are commercially viable. In IPR/PGR practice, however, there is no such unlimited ability to amend.

More specifically, as compared to ex parte re-examination or the now-obsolete inter partes re-examination proceedings, where dozens, or even hundreds, of new proposed claims were the norm, amendment practice in inter partes review and post-grant review is restricted. The presumption offered by IPR/PGR rules (§42.121 and §42.221) is that only one substitute claim would be needed to replace each challenged claim. This presumption may be rebutted by a demonstration of need, and decisions by the PTAB on this point will be interesting to flesh out the boundaries of this presumption, but the right to amend the patent has been severely curtailed.

Further, this presumption is another factor that ways in favor of heading down the path of inter partes review and post -grant review because patent challengers can strategically decide to only include a limited number of patent claims in the IPR to limit the ability of the patent owner to offer amended claims — the fewer challenged claims, the fewer substitute claims that can be introduced. Also notable, the patent owner’s amendment is due within three months of the institution of an IPR/PGR. Such an early deadline is another disadvantage for the patent owner.

Lastly, as in prior USPTO proceedings, claim amendments will work to give rise to intervening rights for any alleged infringer. In IPR/PGR practice, therefore, forcing a patent owner to make claim amendments can cut off a past damage claim. This is especially beneficial if the asserted patent is nearing the end of its patent term because the elimination of a large past damage claim, with little worry of infringing in the future.

5) Low Cost as Compared to District Court Litigation

USPTO proceedings to challenge the validity of patents have always carried a significantly lower price tag than district court litigation. Inter partes review and post-grant review proceedings have the same advantage, albeit slightly less so. Higher filing fees, the use of experts, discovery costs (including deposition costs), are all factors that lead to projections that overall fees for IPR/PGR will range from $150,000 to as much as $300,000 per party. The advantages offered to patent challengers in these proceedings, however, as discussed in detail above, are a bargain when compared to the average cost of patent litigation in the federal courts.

* * * * * * *

In sum, inter partes review and post-grant review proceedings are not likely to become garden-variety tools to weed out “bad” patents, in the way that EU opposition practice is often used. However, for significant disputes — where litigation is ongoing, contemplated or expected — patent challengers with legitimate invalidity defenses will find access to the above-referenced features of IPR/PGR, even at a somewhat higher price tag, to be a true bargain. At a cost that is up to an order of magnitude less expensive than district court litigation, expect patent challengers to dive into the lower burden, higher likelihood of success inter partes review and post-grant review.

Congress Passes America Invents Act Technical Corrections Bill

The House of Representatives today passed a technical corrections bill directed to the America Invents Act.  There are several proposed changes (a summary of which can be found HERE), but only one that directly affects Inter Partes Review and Post Grant Review proceedings.  Namely, the technical corrections bill fixes the “dead zone” in IPR practice that has prevented the initiation of an IPR within the first 9 months after a patent has issued.

Post Grant Review, of course, will become available 0-9 months after issuance of any patent that qualifies as a “first to file” patent under the America Invents Act.  That is, PGR is available for any patent that has an effective date of March 16, 2013 or later.  Given the time required to examine a patent, at the very earliest, the first PGR will not be filed, therefore, until late 2013 or, more likely, early 2014.

In the meantime, Inter Partes Review is, of course, available now, but by the letter of the AIA, a petition seeking IPR can only be filed 9 months after a patent issues, or later.  Thus, for patents that have issued in the last nine months, IPR is technically not available.  This “dead zone” in the legislation was recognized almost immediately and is now being fixed in House Bill 6621.

President Obama is expected to sign HR 6621 into law, making Inter Partes Review available for any non-“first to file” patent at any time, fixing the IPR “dead zone.”

Significant Grounds Must Exist to Permit New Testimony in Inter Partes Review

The PTAB has again shown that, unless there is a solid demonstration of good cause, it will not allow much wiggle room in the implementation of the Inter Partes Review Trial Practice Rules.  This time, in IPR2012-00035 (Nissan North America v. Collins), the patent owner sought authorization to introduce testimony with its Preliminary Patent Owner Response, despite the fact that 37 CFR §42.107(c) states that no new testimonial evidence is allowed in such a preliminary response to the petition.

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]37 CFR §42.107(c) – (c) No new testimonial evidence.  The preliminary response shall not present new testimony evidence beyond that already of record, except as authorized by the board.[/pullquote]

The Trial Practice Guide further explains the circumstances under which new testimony may be presented in a preliminary response:  “The preliminary response may present evidence other than new testimonial evidence to demonstrate that no review should be instituted. §§ 42.107(c) and 42.207(c). New testimonial evidence may be permitted where a party demonstrates that such evidence is in the interests of justice. For example, the Board may permit new testimonial evidence where it addresses issues relating to the petitioner’s standing, or where the Board determines that consideration of the identified evidence is necessary in the interests of justice as the evidence demonstrates that the trial may not be instituted.”  Trial Practice Guide at 48764.

In Nissan, the patent owner, Collins, stated that permitting new testimonial evidence was in the interests of justice because the testimony it intended to offer would refute the patent challenger’s witness’ testimony as to how one of skill in the art would view the prior art.  This was deemed an insufficient basis by the Board “to veer from the ordinary course of the proceeding.”  Order at 4.

As has been its practice in early Orders, however, the PTAB did provide some guidance on what may be sufficient to satisfy the “interests of justice” in the future.  In this regard, if the new testimony were directed to an issue of standing (i.e., whether the petition was properly filed), as the Trial Practice Guide suggests, new testimony may have been allowed.  Evidence that is directed merely to the credibility of a witness is not sufficient to overcome the rule prohibiting new testimonial evidence.  While the patent owner could rely upon other evidence to attack the witness’ credibility, “new testimonial evidence in this context is best considered if and when a trial is instituted.”  Order at 4.

Pro Hac Vice Motions in Inter Partes Review Are Commonplace, Non-Controversial

iStock_000009156726XSmallAs previously discussed, only time will tell whether or not the worst case scenario arises and Inter Partes Review and Post Grant Review Practice become part of the “patent guild” – excluding non-practitioners in all but the rarest of cases.  To date, however, the PTAB has not shown any reluctance to consider motions for admittance pro hac vice.  And now, the Board has granted its first Motion for Pro Hac Vice Admission in IPR2013-00020 LKQ Corp. v. Clearlamp, LLC (Harness Dickey Represents Clearlamp in this IPR).

The basis for the Board’s ruling was that good cause was indeed shown since the petitioning attorney: (1) is an experienced litigation attorney, (2) is counsel in litigation related to the IPR, (3) has represented LKQ in the past, and (4) has counseled LKQ on intellectual property matters in the past.  Because the petitioning attorney attested to each of these facts, the Board found good cause existed for the admission of the petitioning attorney.  More specifically, the Board found that there is a need for LKQ to have its related litigation counsel involved in the IPR proceeding.  Order at 2.  Notably, even though the motion was not contested, the PTAB did not seemingly place any weight on that fact at all in coming to its decision.

All is not lost, however, for those worried about the “patent guild,” the PTAB did require that LKQ must continue to have a registered practitioner as its lead counsel in the inter partes review.

Federal Circuit affirms PTAB in Inter Partes Reexamination

As the first-filed Inter Partes Review proceedings begin to advance down their respective paths, it will be some time before we have the benefit of learning from the PTAB’s final written decisions, let alone Federal Circuit review.  In the meantime, it will be instructive to follow the appeals of inter partes reexaminations to learn how the Federal Circuit will treat decisions of the PTAB (formerly the Board of Patent Appeals and Interferences).

One such Federal Circuit decision was handed down on December 27, 2012 in C.W. Zumbiel Co., v. Kappos, (Reexamination No. 95/000,077).  The underlying patent in this reexamination proceeding, US Patent No. 6,715,639, is directed to a box that holds containers, like soda cans.  The figures of the ‘639 patent disclose the familiar, elongated soda cardboard box that can hold a 12-pack of soda, but also has a perforated flap that can be opened or torn off the box to expose the cans of soda.

ZumbielIn 2004, inter partes reexamination of the ‘639 patent was requested and, ultimately, the examiner rejected numerous claims as obvious, but also confirmed the patentability of several claims.  The patent owner appealed this determination to the Board, and the Board found additional claims to be unpatentable, but confirmed the validity of several claims.  Subsequently, appeal was taken to the Federal Circuit.

The Federal Circuit began its analysis by articulating its standard of review – the legal determination of obviousness is to be reviewed de novo, and the underlying factual findings are reviewed for substantial evidence.  Then, in a very detailed analysis, but reminiscent of opinions reviewing an obviousness determination from a district court, the Federal Circuit affirmed the non-obviousness and obviousness findings by the Board.

Along the way, the Federal Circuit reiterated several legal principles that are worth recounting, if only for understanding the significant similarity between this analysis and that provided in review of district court litigation.  First, the decision remarked that “[a]lthough the PTO gives claims the broadest reasonable interpretation consistent with the written description…claim construction by the PTO is a question of law that we review de novo…”  Opinion at 18 (the Federal Circuit then went on to agree with the Board’s claim construction).  Second, the Court rejected the patent challenger’s obviousness argument by pointing out that the proffered references teach away from the suggested combination (the prior art taught that the perforation line should be higher than 1/2 of a can height, but less than the full can height; the claimed invention required a perforation line between the first and second container).  Third, the Federal Circuit found that the preamble was limiting based upon the fact that the claim depends on it for antecedent basis (“containers” recited in the claim body depend on “plurality of containers” from the preamble).

In the end, because the Federal Circuit agreed with the Board’s obviousness and non-obviousness determinations in the underlying inter partes reexamination, the Board’s decision was affirmed.

PTAB Continues to Add Gloss to Inter Partes Review Trial Practice Rules

iStock_000008674333XSmallWelcome to our third and final report on one of the more comprehensive orders issued to date by the PTAB in an Inter Partes Review proceeding, the PTAB’s “Conduct of the Proceedings” Order from Inter Partes Review No. IPR2012-00022 (Ariosa Diagnostics v. Isis Innovation, Ltd.).  This post focuses on three quick-hitting topics touched upon by the Board in the Ariosa IPR that helps add clarity regarding how these proceedings will be handled.  Earlier posts relating to this order can be found HERE and HERE.

First, the PTAB made note of the fact that the parties advised the Board that they were discussing the entry of a protective order.  As advice that can be used as an IPR practice tip, the Board requested that, to the extent the proposed order deviated from the Board’s default protective order, the parties should identify the differences between the proposed protective order and default protective order.

Second, the PTAB asked Isis, the patent owner, for a date by which it thought it would file any Patent Owner Preliminary Response.  Ariosa took the opportunity to suggest that, given that many of the issues in this Inter Partes Review were similar to those addressed in the co-pending district court litigation between the same parties, that Isis should be given a shortened time frame to file the Preliminary Response.  Isis responded by suggesting that the impending holidays, as well as the fact that counsel for the IPR was different than counsel for the litigation, would make it difficult to file the Preliminary Response sooner than the 3 month window allowed by the Trial Practice Rules.  37 CFR § 42.107.  The Board did not shorten the three month timeframe for filing the Preliminary Response.  It is, however, telling that it considered such an action – suggesting that such requests to shorten the timeframe for filing a Patent Owner Preliminary Response may, under the right circumstances, be granted.

Third, and lastly, Isis requested clarification of the page limit for the Preliminary Response regarding whether such response is limited to the number of pages included in the petition, or whether it was entitled to the full 60 pages allowed by the Trial Practice Rules.  37 CFR §42.24.  The Board made clear that the patent owner is entitled to the full 60 pages provided in the rules, even if the petitioner did not use the full 60 pages in its petition.

Slowly, but surely, clarity is being brought to Inter Partes Review proceedings and the Trial Practice Rules that govern them.