What goes into a Patent Owner’s “Preliminary Response?”

Scott Daniels | April 21, 2014

When a petition for inter partes review is filed, the owner of the challenged patent may file a preliminary response explaining why review should not be instituted.  If review is instituted, the patent owner may (1) file a response explaining why the claims under review are patentable over the cited art and (2) request permission to amend its claims, if needed.

Clearly, the role of the patent owner’s response is to dig into the merits of whether the claims are valid over the prior art.  What, then, is the role of the patent owner’s preliminary response?  In several venues, the APJs – who have diligently crisscrossed the country to explain the details of review proceedings to eager practitioners – have indicated that the preliminary response serves a limited role. The patent owner should raise narrow legal arguments in the preliminary response, such as estoppel, and save the heavy validity analysis for the response. 
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Five IPRs Filed against Single Auto Patent, Among the Requests Week of April 7, 2014

Scott Daniels and Cindy Chen | April 15, 2014

Page limits, believe it or not, continue to be an important issue for validity challenges at the Patent Office – how does a petitioner, that has lots of prior art to assert, deal with the 60-page limit on inter partes review requests?  For Ford, Honda, BMW and Nissan, it was to file five separate IPR requests against a single car-display patent owned by Vehicle Operation Technologies (see inter partes review request No. (7)).  For Motorola it was to rely on the old stand-by, ex parte reexamination.  Last Monday it filed a 330-page request against an Intellectual Ventures patent (see ex parte request No. (4)). For good measure, Motorola filed ex parte requests against two other IV patents (see ex parte request Nos. (5) & (6)).

An unknown party requested ex parte reexamination of AbbVie’s recently issued U.S. Patent No. 8,674,112 that claims a crystalline polymorph of ritonavir (see ex parte reexamination request No. (13).  Ritonavir is known for inhibiting of HIV protease.  IPRs continue to be popular, but only ex parte reexamination affords anonymity to the requester. 

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Challenge to Automobile Patents, Among the Requests Week of March 31, 2014

Scott Daniels and Cindy Chen | April 7, 2014

Automobile patents ranked highly in terms of the number of new IPR filings last week.  Ford requested inter partes review of three hybrid vehicle patents owned by Paice and Abell (see inter partes review Request Nos. (9), (10) & (11)).  Paice has sued Ford and Hyundai for infringement of the patents in Maryland.  And Chrysler and Nissan teamed up to attack three Norman IP Holdings patents (see inter partes review Request Nos. (3), (6) & (7)). 

Apple filed eleven post-grant review petitions against six Smartflash data storage and access patents (see covered business method review Request Nos. (1) through (6)). 

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APJs’ Accept Legal Expert’s Declaration Focused on Specific Dispute

Scott Daniels | April 7, 2014

Most judges are reluctant to permit expert testimony on the state of the law – they consider themselves to be perfectly capable of understanding and applying the law without such assistance.  This view is embodied in the Patent Office rules for inter partes review proceedings:   “[t]estimony on United States patent law or patent examination practice will not be admitted.”  37 C.F.R. § 42.65(a). 

The APJs recently indicated some flexibility on this point, however, in Amneal Pharmaceuticals v. Supernicus Pharmaceuticals (Paper 41, IPR2013-00368).  There, the Patent Owner filed an expert declaration of a former Patent Office official, explaining why certain documents at the Patent Office would not have been reasonably accessible to the public and therefore not prior art against the challenged claims. 

In a conference call, the Petitioner attacked the admissibility of the declaration.  The APJs disagreed, stating that the declaration “is not directed entirely to expert testimony on patent examination practice. Rather, the declaration testimony appears to tether the discussion of the relevant patent examination practice closely to the facts of this case for the purpose of providing context. The Board takes the view that the exhibit is not inadmissible under 37 C.F.R. § 42.65(a).”  (Emphasis added).

In a twist the APJs then invited the Petitioner to file a written motion to exclude the declaration.  So perhaps the last word on this issue has not yet been spoken.  Still, the message for practitioners is that expert testimony on legal issues is possible so long as it is limited to analysis of the specific facts in the case under consideration.  More general comments about the state of the law or Patent Office practice are likely to be excluded.

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