On March 18, 2019, the PTAB designated three decisions as precedential, two decisions relating to oral arguments and one decision on motion to amend.
Motion to Amend
Amazon.com, Inc. v. Uniloc Luxembourg S.A., IPR2017-00948 (PTAB Jan. 18, 2019) (Paper 34): In the context of a motion to amend, Section 311(b) does not preclude Petitioner from raising, or the Board from considering, other grounds of unpatentability, including Section 101, as to substitute claims not yet part of a patent. The Board explained that Aqua Products shifted the burden from the patent owner on patentability in a motion to amend but did not foreclose analysis of whether substitute claims complied with Section 101.
Oral Argument: The following two decisions are related to testimony at oral arguments.
K-40 Electronics, LLC v. Escort, Inc., IPR2013-00203 (PTAB May 21, 2014) (Paper 34): Factors that may be considered in determining whether to permit live testimony. In granting the motion to present live testimony from the named inventor, the panel elucidated the following factors: (1) whether demeanor of witness may be critical to assessing credibility; (2) whether witness is principal fact witness; and (3) whether witness testimony may be case-dispositive
DePuy Synthes Products, Inc. v. MEDIDEA, LLC, IPR2018-00315 (PTAB Jan. 23, 2019) (Paper 29): Testimony of an inventor at the oral hearing is considered new evidence, and not permitted, if a declaration from the inventor has not been previously provided. In referring to the Trial Practice Guide, the decision states that "[a] party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted."
On March 7, 2019, PTAB designated a decision on motion to amend as precedential.
Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, 01130 (PTAB Feb. 25, 2019) (Paper 15): This decision sets forth the requirements and burden for a motion to amend. A motion to amend may cancel and/or propose substitute claims; the substitute claim will be treated as contingent and considered only if a preponderance of evidence establishes that the original claim was unpatentable. The burden of persuasion is on the petitioner to show proposed substitute claims are unpatentable and the Board determines unpatentability by preponderance of the evidence based on the entire record. Motion may propose reasonable number of substitute claims and must explain if more than one substitute claim per challenged claim. Patent owner must respond to ground of unpatentability involved in the trial. Motion may not present substitute claims that enlarge the scope or introduce new matter. Motion must include a claim listing reproducing each proposed substitute claim and the motion, as well as any opposition, is limited to 25 pages while reply and sur-reply are limited to 12 pages. All parties have a duty of candor including patent owner's duty to disclose any material to patentability of substitute claims.
The decisions are available here.
Motion to Amend
Amazon.com, Inc. v. Uniloc Luxembourg S.A., IPR2017-00948 (PTAB Jan. 18, 2019) (Paper 34): In the context of a motion to amend, Section 311(b) does not preclude Petitioner from raising, or the Board from considering, other grounds of unpatentability, including Section 101, as to substitute claims not yet part of a patent. The Board explained that Aqua Products shifted the burden from the patent owner on patentability in a motion to amend but did not foreclose analysis of whether substitute claims complied with Section 101.
Oral Argument: The following two decisions are related to testimony at oral arguments.
K-40 Electronics, LLC v. Escort, Inc., IPR2013-00203 (PTAB May 21, 2014) (Paper 34): Factors that may be considered in determining whether to permit live testimony. In granting the motion to present live testimony from the named inventor, the panel elucidated the following factors: (1) whether demeanor of witness may be critical to assessing credibility; (2) whether witness is principal fact witness; and (3) whether witness testimony may be case-dispositive
DePuy Synthes Products, Inc. v. MEDIDEA, LLC, IPR2018-00315 (PTAB Jan. 23, 2019) (Paper 29): Testimony of an inventor at the oral hearing is considered new evidence, and not permitted, if a declaration from the inventor has not been previously provided. In referring to the Trial Practice Guide, the decision states that "[a] party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted."
On March 7, 2019, PTAB designated a decision on motion to amend as precedential.
Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, 01130 (PTAB Feb. 25, 2019) (Paper 15): This decision sets forth the requirements and burden for a motion to amend. A motion to amend may cancel and/or propose substitute claims; the substitute claim will be treated as contingent and considered only if a preponderance of evidence establishes that the original claim was unpatentable. The burden of persuasion is on the petitioner to show proposed substitute claims are unpatentable and the Board determines unpatentability by preponderance of the evidence based on the entire record. Motion may propose reasonable number of substitute claims and must explain if more than one substitute claim per challenged claim. Patent owner must respond to ground of unpatentability involved in the trial. Motion may not present substitute claims that enlarge the scope or introduce new matter. Motion must include a claim listing reproducing each proposed substitute claim and the motion, as well as any opposition, is limited to 25 pages while reply and sur-reply are limited to 12 pages. All parties have a duty of candor including patent owner's duty to disclose any material to patentability of substitute claims.
The decisions are available here.
RSS Feed
