On June 12, 2017, the U.S. Supreme Court granted certiorari on the constitutionality of IPRs. Oil States Energy Svcs, LLC v. Greene's Energy Group, LLC, 639 Fed. Appx. 539 (Fed. Cir. 2016), cert. granted, No. 16-712 (June 12, 2017). The Court presented the following questions: (1) whether inter partes review-an adversarial process used by the PTAB to analyze the validity of existing patents-violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury; (2) whether the amendment process implemented by the PTO in IPR conflicts with this Court's decision in Cuozzo, and congressional direction; and (3) whether the "broadest reasonable interpretation" of patent claims-upheld in Cuozzo for use in IPR requires the application of traditional claim construction principles, including disclaimer by disparagement of prior art and reading claims in light of the patent's specification.
In its Order, PTAB ruled that demonstratives during oral arguments can only include arguments and evidence already presented to the Board and included in the parties' papers (petition, patent owner response, reply etc). Int'l Business Machines Corp. v. Intellectual Ventures II, LLC, IPR2015-00089, -00092, Paper 41 (PTAB Jan. 14, 2016). In this case, the Petitioner objected to certain slides that cited to patent owner's expert declaration that patent owner did not cite in its Patent Owner Response or any other paper. Patent Owner acknowledged but contended that the paragraphs referenced are conclusions which were argued in the Response. Agreeing with the Petitioner's arguments, the Board precluded the use of the demonstratives to the extent the slides reference paragraphs of the declaration that are not included in the Response.
PTAB instituted an inter partes review after prior denial of the petition conceding that the panel had erred when it overlooked a key argument of the challenger when denying the petition the first time. AVX Corp. v. Greatbatch Ltd., IPR2015-00710.
PTAB designated two recent decisions as being precedential--LG Elec., Inc. v. Mondis Tech Ltd., IPR2015-00937, Paper 8 (PTAB Sept. 17, 2015); and Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14, 2015). In LG Electronics, LG was served with two complaints, one in 2008 and another in 2014. The 2008 case settled and was dismissed in part with prejudice. The 2014 complaint was served less than a year prior to filing the petition. In refusing the IPR, PTAB disagreed with LG's argument that "a complaint" means "a latest" complaint and that the 2014 complaint makes it eligible to file the IPR. In Westlake, Westlake filed a follow-on CBM petition after PTAB's partial Institution Decision in which the Board opted not to consider some claims. Following issuance of a Final Written Decision, patentee filed a motion to terminate the follow-on petition arguing that the Final Written Decision incorporates the Institution Decision by reference and thus, applies to all claims challenged in the petition, not just the claims on which trial is instituted. PTAB disagreed and found that non-instituted claims are not claims that have resulted in a Final Written Decision.
An expanded panel of the PTAB granted the joinder motion allowing the same party's serially-filed IPR petitions to be consolidated into a single proceeding when one of the petitions would have been time-barred but for the grant of the motion. Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corp., IPR2015-00762, Paper 16 (PTAB Oct. 5, 2015). Petitioner timely filed an IPR petition but due to certain deficiencies, filed a second petition more than one year after it had been served with a complaint. The second petition however was accompanied by a joinder motion under Section 315(c). A PTAB panel denied the joinder reasoning that the Petitioner could not be joined as a party to a proceeding in which it is already a party. On rehearing by an expanded panel, the expanded panel concluded that Section 315(c) permits both party joinder and issue joinder. In granting the motion, the expanded panel reasoned that the second petition merely seeks to rectify a procedural deficiency of the first petition and doesn't prejudice the patent owner.
On August 19, 2015, the USPTO announced proposed changes to rules governing PTAB proceedings. The announcement expands the PTO's "quick-fixes" initiated on March 27, 2015. The proposed changes would: (1) allow patent owner's to include new testimonial evidence, such as an expert declaration with its opposition to a petition; (2) set new requirements to police attorney misconduct; (3) clarify aspects of the USPTO's claim construction standard; (4) change how the PTAB should handle multiple proceedings; (5) clarify when the PTAB will allow live testimony; and (6) address motions by patent owner's to amend claims. PTO's announcement can be found here.
On August 7, 2013, a panel of the PTAB issued an order detailing the guidelines for a foreign language deposition. Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper 55 (PTAB Aug. 7, 2013) In providing the guidelines, the panel acknowledged that 37 CFR 42.53 and the panel's guidelines will govern the taking of a deposition in a foreign language. Per the guidelines, the party proffering the witness is responsible for providing the first interpreter and provide the first interpreter's information at least five business days before cross-examination. The party cross-examining the witness may engage a second interpreter and at least five business days before the cross-examination, provide the information on the second interpreter. A consecutive mode of interpretation shall be used and where the second interpreter disagrees with the first interpreter, the second interpreter shall inform his counsel by note. If counsel desires to raise the disagreement on the record, the second interpreter will be allowed to interpret the question or answer. An objection shall be made on the record in instances where there's a disagreement as to interpretation between the two interpreters.
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