Terminal Disclaimer does not Change Claim Construction Standard, at least not in the Final Stages of an Inter Partes Review

Scott Daniels | May 28, 2014

Patent Owners have criticized the new AIA post-issuance proceedings for a number of reasons.  The loudest criticism, however, has been directed at the APJs’ giving challenged patent claims their “broadest reasonable construction” – making them more vulnerable to attack from the prior art.  Only where the patent has expired (and the Patent owner may no longer amend its claims) do the APJs follow the practice of the District Courts in infringement actions, by construing claims more narrowly according to the Phillips v. AWH decision.


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APJs Allow Live Testimony at Oral Hearing

Scott Daniels | May 28, 2014

This past Thursday, the APJs signaled their willingness to hear live testimony at the oral hearing, at least in certain circumstances.  The panel in K-40 Electronics v. Escort (IPR2013-00203) explained that they do “not envision that live testimony will be necessary at many oral arguments … [but] under very limited circumstances, cross-examination of witnesses may be ordered to take place in the presence of an administrative patent judge.”


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APJs Distinguish Patent Owner’s Two Discovery Periods

Scott Daniels | May 12, 2014

Apart from the disclosure of the asserted prior art references, the most important piece of evidence in an inter partes review is the expert’s declaration.  Almost as important are the “observations” that a party may make on its cross-examination of the opposing party’s expert declarant, that is, arguments belittling the testimony of the opposing party’s expert.

A party must be careful, however, in choosing a time in which to take such cross-examination and in choosing a time to seek permission to make its observations.  The APJs’ discovery ruling last week in Respironics v. Zoll Medical (IPR2013-00322) is a case-in-point. There, Patent Owner Zoll cross-examined Petitioner Respironics’ expert declarant and the next day asked the APJs for guidance on how and when to request permission to make observations on that cross-examination.  The APJs gave a mixed answer, depending on the subject matter of the cross-examination.


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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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