The Patent Office Can Commiserate With the ITC In Administrative Procedure Act Woes

Cindy Chen | August 8, 2014

Align Technology, Inc. v. ITC

July 18, 2014

Federal agencies such as the International Trade Commission and the United States Patent and Trademark Office enjoy broad administrative authority, and in the case of the ITC, independence. [1] These agencies’ authority, though broad, is not unbounded. The Administrative Procedure Act (APA) reins in that authority by allowing courts to vacate agency decisions that are “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.” up U.S.C. §706(2)(A). Align Technology v. ITC marks an instance where a federal agency is found to have overstepped its broad authority.

Align Technology, Inc. owns patents relating to dental aligners. As teeth are unique, dental aligners must be custom-designed for each patient. Align’s patents disclose various methods of obtaining data to determine the positioning of a patient’s teeth for the purpose of creating a three-dimensional digital model of the teeth. Digital data are then extracted from the three-dimensional digital model as blueprints for manufacturing successive dental aligners to incrementally move the patient’s teeth to their desired alignment.
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APJs Confirm a Deposition Protocol

Scott Daniels | July 25, 2014

The issue of when an attorney defending a deposition in an IPR proceeding may privately speak with his or her witness arose this week in Focal Therapeutics v. Senorex (IPR2014-00116).

According to counsel for the Patent Owner, when he had concluded his cross-examination of the Petitioner’s expert witness, “Petitioner’s counsel initiated a private conference with his witness to discuss his redirect testimony.”  Evidently, counsel for the Patent Owner complained and the parties sought clarification from the APJs.  The question posed was whether during the specific period – after cross-examination concluded, but before redirect questioning has begun – may the defending attorney privately confer with the witness.

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A Likely Uphill Battle for Synopsys In Suit Against The Patent Office

Cindy Chen | June 13, 2014

In a complaint recently filed in a Virginia federal court, Synopsys accused the Patent and Trademark Office (“the Patent Office”) of prescribing rules and regulations for inter partes review (77 Fed. Reg. 48727) that are procedurally defective and ultra vires. Synopsys took issue specifically with Patent Office’s Rules 42.108(a) and (b), which govern the institution of review and instruct that:

(a) When instituting inter partes review, the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim;

(b) At any time prior to institution of inter partes review, the Board may deny some or all grounds for unpatentability for some or all of the challenged claims. Denial of a ground is a Board decision not to institute inter partes review on that ground.

These rules, Synopsys argued, are inconsistent with Sections 314(a) and 318(a) of the America Invents Act (“AIA”). Section 314(a) sets the threshold for instituting inter partes review at “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Synopsys interpreted this statutory language to mean that where the threshold is met, the Patent Office must grant a petition for inter partes review in whole.
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Scope of Live Testimony in Final IPR Hearings

Scott Daniels | June 4, 2014

Last week we reported that in K-40 Electronics v. Escort (IPR2013-00203), the APJs had granted the Patent Owner’s request that its inventor be allowed to give live testimony on his invention’s conception date, presumably to remove the references as prior art.  The APJs explained that live testimony was appropriate in view of the type of testimony to be presented.  They set a procedure, however, in which the inventor first would be cross-examined by the Petitioner on his declaration, followed by re-direct examination by the Patent Owner.

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