Printed Publication? Prove it: IPR Petitioners bear burden of establishing status as prior art

Authors: Jeff Totten and Rachel Elmsley
Editor: Maureen Queler

By statute, prior art in IPRs is limited to patents and printed publications.  Proving a document was published, as well as the publication date, often requires evidence beyond the document’s face.  As recent Patent Trial and Appeal Board decisions illustrate, petitioners ignore the need for this evidence at their own peril.

For example, decisions denying institution in Coalition for Affordable Drugs (ADROCA)LLC v. Acorda Theraputics, Inc., IPR2015-00720 and IPR2015-0817, (August 24, 2015) found the petitioner had not established that scientific posters were prior art publications under 35 U.S.C. § 102(b).  It was undisputed that the posters had been displayed at scientific meetings.  Nonetheless, looking to the Federal Circuit’s In re Klopfenstein decision, the Board noted the record lacked evidence establishing: Continue reading

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PTAB Proposes Amendments to its Rules of Practice

Author: James Stein
Editor: Aaron Capron

On Wednesday, the U.S. Patent and Trademark Office (USPTO) released a much-anticipated proposed rule package in response to public feedback, making what it calls “more involved” changes to the rules governing Patent Trial and Appeal Board trial proceedings. 80 Fed. Reg. 50720 (Aug. 20, 2015). Some of the proposed changes may benefit patent owners, like allowing submission of new testimonial evidence before institution and replacing petition page limits with word count limits. The new rules would also expressly define a duty of candor and good faith for all parties and practitioners appearing before the Board. The proposed changes also codify some of the Board’s current practices, such as applying the broadest reasonable interpretation to patent claims that will not expire before a final written decision and requiring the parties to serve demonstratives with more time to work out disputes before oral hearing.

The USPTO is soliciting comments on the proposed rule package until October 19, 2015. A detailed breakdown of the rules can be found as an IP Update on Finnegan’s website.

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IPR and CBM Statistics for Final Written Decisions Issued in July 2015

Authors: Daniel F. Klodowski, Elliot C. Cook
Editor: Aaron Parker

In the 33 Final Written Decisions issued by the Patent Trial and Appeal Board in July, the Board cancelled 302 (70.73%) of the instituted claims and declined to cancel 125 (29.27%) of the instituted claims. Patent owners did not concede any instituted claims through motions to amend.

PTAB-STATS-Claim-and-Case-Disposition-IPR-Claim-July-Stats

On a per-case basis, no instituted or substitute claims survived in 19 (57.58%) of the decisions, all instituted claims survived in 6 (18.18%) of the decisions, and a mixed outcome occurred in 8 (24.24%) of the decisions. A mixed outcome occurs where at least one instituted or substitute claim remains patentable, and at least one is cancelled, in a Final Written Decision.

PTAB-STATS-Claim-and-Case-Disposition-IPR-Case-July-Stats

More detailed cumulative statistics on the Board’s IPR and CBM decisions, updated through August 1, 2015, are available here on the AIA Blog.

Lists of the top 10 PTAB judges by panel appearances and authored opinions are available here.

Numbers of final written decisions by technology center are available here.

Various other PTAB metrics collected and generated by Finnegan are reserved for the use of Finnegan and its clients.

Tags: AIA, IPR, CBM, statistics, trends, America Invents Act, AIA, inter partes, covered business method, AIA Blog, final written decisions.