Statistics Show Patent Owners Concede Many Claims in IPR

Author: Jonathan R.K. Stroud
Editor: Aaron L. Parker

Patent owners concede claims for many reasons—like tactical choice—or none, i.e., through procedural error. Common sense suggests self-cancelled claims would be rare. But a conservative estimate shows almost a tenth of all claims decided—and more than a tenth actually cancelled—where cancelled by choice. To date, almost two hundred claims—or just under eight percent—fell by patent owner’s concession in IPRs where a final written decision on the merits issued. (That does not include claims that were conceded prior to settlement and termination; likewise, those conceded claims do not include the myriad claims—and whole patents—cancelled via settlement agreement terminations or Requests for Adverse judgment.)

PTAB-STATS--IPR_Results_Claim

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Appeal of First IPR to Federal Circuit – Part II: Oral Argument

Author: Jonathan R.K. Stroud
Editor: Troy E. Grabow

On November 3, 2014, the Federal Circuit heard oral argument in In re: Cuozzo Speed Technologies LLC, No. 2014-1301(MP3 recording available here), an appeal from the first IPR filed under the AIA and the first IPR final written decision. Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-0001, Paper 59 (Nov. 13, 2013) (Final Written Decision). Judges Newman, Dyk, and Clevenger probed claim construction standards, appellate review of an institution decision, and the inability to successfully amend in IPR.

The appellant, Cuozzo, asserted the Board made three errors but counsel for Cuozzo only had time to identify and address the first two. First, the Board violated the “particularity” requirements of 35 U.S.C. § 314(a) when it instituted on clams 10 and 14 based on grounds not raised for those claims but raised for a dependent claim. Appellant’s roadmap was quickly derailed by questions on whether an institution-related decision was appealable and whether the statute barring appeal was meant to merely bar interlocutory appeals.

Second, appellant argued the Board incorrectly applied the broadest reasonable interpretation (BRI) standard instead of the Phillips standard. Judge Dyk questioned whether it mattered which standard was applied where the preferred embodiment would still be included in the scope of the construed claim (because then the obviousness arguments could still apply). Appellant also argued the USPTO exceeded it rulemaking authority.

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Federal Circuit Again Reverses Denial of Stay, a Nod to “Thumb on Scales of Justice” in Favor of Stays

Authors: Troy E. Grabow, Linda J. Thayer
Editor: Aaron L. Parker

On November 20, 2014, in Versata Software, Inc. v. Callidus Software, Inc., No. 2014-1468, the Federal Circuit reversed a Delaware district court’s denial of a stay pending CBM review. The Court noted that although it had authority under AIA § 18(b)(2), to review the decision de novo, it must be reversed even under the traditional abuse of discretion standard.

The Federal Circuit considered the district court’s application of the four factors of AIA § 18(b)(1) when deciding whether to grant a stay: (A) whether a stay will simplify the issues in litigation; (B) stage of litigation; (C) undue prejudice to nonmoving party or clear tactical advantage for moving party; and (D) whether a stay will reduce the burden of litigation on the parties and the court.

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