Tag Archive: Reduction to Practice

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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Aug 21

PTAB Generously Expands Page Limits in Patent Owner Response

The Board has earned a reputation for rigidly following the procedural rules for IPR proceedings, for good reason. Early on, the Board was likely concerned that an ad hoc web of decisions that granted relief from the variety of rules that govern IPR would create an unwieldly body of decisions. As IPR approaches its 3-year …

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Mar 25

PTAB Rules Lab Notebooks Insufficient to Prove Conception and Reduction to Practice

Swearing behind a reference is an enticing option for a Patent Owner, but the Board has again reminded parties that rigorous—and admissible—proof of conception and reduction to practice is still necessary. This issue was addressed in Microsoft Corporation v. Surfcast, Inc., a consolidated opinion concerning four IPR petitions filed by Microsoft challenging one patent in …

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Mar 24

PTAB Rejects Two Attempts by Patent Owners to Antedate Prior Art

The fact-based nature of conception/reduction to practice issues makes it worthwhile to consider a number of these types of cases as they arise. Here, we discuss such issues from two Board decisions, K-40 Electronics, LLC v. Escort, Inc., IPR2013-00240 and Handi Quilter, Inc. and Tacony Corporation v. Bernina International AG, IPR2013-00364. In both cases, the Board rejected Patent Owner’s attempt …

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Oct 14

Board Considers Proof of Diligent Reduction to Practice

Patent Owner’s attempt to disqualify prior art in an inter partes review failed because it could not show diligence from conception to reduction to practice in Medtronic, Inc., et al. v. Troy R. Norred, M.D., IPR2014-00395, U.S. Patent No. 6,482,228. Patent Owner’s preliminary response sought to remove one of the allegedly-anticipatory references as prior art by providing evidence of …

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Aug 29

Corroborating Evidence Insufficient in Final Written Decision Canceling All Claims

One of the more fact-dependent inquiries in patent disputes is the issue of conception and reduction to practice.  This issue was raised in an inter partes review setting in CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 122 (Final Written Decision), wherein Patent Owner sought to swear behind cited prior art by filing a declaration …

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Nov 13

Petitioners Strike First: PTAB Issues First Final Decision – Claims Unpatentable and Motion to Amend Denied

We finally made it!  Almost 16 months after Garmin kicked off this fun IPR roller coaster we have been riding, the PTAB has issued its first Final Written Decision, finding that all three claims-at-issue in the IPR trial styled as Garmin Int’l, et al., v. Cuozzo Speed Tech. LLC, IPR2012-00001 (Paper 59), involving U.S. Patent No. …

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