Jones Day's PTAB Litigation Blog, Advanced Topics

The Jones Day PTAB team frequently writes in depth Jones Day Commentaries describing PTAB Trial aspects of importance. The list below represents some of our most well read. To subscribe to our Commentaries, please visit the Publication Signup page on the Jones Day website.

Motions to Disqualify Opposing Counsel in Patent Trial and Appeal Board Proceedings
Motions to disqualify opposing counsel often raise difficult issues of legal ethics. Behind any motion to disqualify, two competing interests are implicated: the client’s right to the attorney of its choice versus the need to maintain ethical standards of professional responsibility. Few things are as disconcerting to a litigant as the loss of access to trusted counsel. For these reasons and others, disqualification proceedings can be heated battles. Motions to disqualify opposing counsel in proceedings before federal courts are not uncommon, with such motions being used for both legitimate reasons and “purely tactical reasons, such as delaying the trial.”  Read more

Obviousness in Inter Partes Review
This Commentary addresses the frequency and treatment of obviousness in Inter Partes Review proceedings before the USPTO’s Patent Trial and Appeal Board (PTAB).  Apparently the PTAB loves obviousness. In 2015, nearly two-thirds of claims instituted for inter partes review (“IPR”) were based on obviousness grounds.  Read more

Amending Claims During Inter Partes Review
This Commentary addresses some of the unique characteristics of the USPTO’s Patent Trial and Appeal Board post-grant amendment practice, including motion timing, the scope of amendments, the use of “substitute” claims, and the “contingent” nature of PTAB claim amendments. It also discusses—from the perspectives of both the petitioner and the patent owner—the PTAB’s guidance to date regarding claim amendments, what has worked (once), what has not worked (generally), and the PTAB’s expectations regarding claim construction. We describe certain pitfalls that patent owners have experienced in moving to amend patent claims during an IPR, and we suggest pointers that may improve the likelihood that a PTAB panel will grant a motion to amend. Conversely, petitioners may find much useful fodder here for opposing a patent owner’s motion to amend. Read more

Appellate Review of PTAB Decisions
On average, at least three out of five written decisions handed down by the Patent Trial and Appeal Board in post-grant proceedings are appealed. Via the America Invents Act, Congress has granted exclusive jurisdiction over these matters to the U.S. Court of Appeals for the Federal Circuit. Given the likelihood of an appeal, knowing what to expect and how to prepare is crucial. This Commentary explains the procedures, processes, and timelines involved. Read more

Defining the Covered Business Method Patent
Covered Business Method patent post-grant review proceedings, as authorized under the America Invents Act, are an attractive option when available. However, determining exactly which patents are eligible for this kind of review has been challenging. This Commentary reviews input from pertinent parties to help clarify questions relating to eligibility. Read more

Exclusion of Evidence Before the PTAB
Motions to exclude can be an effective part of a broader strategy to damage opposing evidence in Patent Trial and Appeal Board proceedings. This Commentary explains the mechanics of filing, reviews examples of successful and unsuccessful motions to exclude, and provides a best practices summary. Read more

Parallel Litigation and IPR – Don’t Forget Reissue
Inter partes review was introduced by the America Invents Act to provide a trial-like proceeding for challenging the patentability of patent claims based on patents and printed publications. For the IPR trial to be instituted, the petitioner must establish a reasonable likelihood that it will prevail in showing unpatentability of at least one challenged claim. Amending claims in IPR proceedings, however, has proven to be exceedingly difficult. In light of these difficulties, patent owners have increasingly been turning to reissue applications to pursue claim amendments. This Commentary details strategies used by patent owners in filing reissue applications for patents challenged in IPR trials and provides additional considerations for patent owners filing such applications. The Commentary further details actions that an IPR petitioner may take when faced with co-pending IPR and reissue proceedings. Read more

Petition and Motion Practice Before the PTAB
The Leahy-Smith America Invents Act has brought a new era of administrative trials before the Patent Trial and Appeal Board in connection with inter partes review. The Board followed the Act with the introduction of its Final Rules of Practice, established to govern trial practice for these proceedings. This Commentary provides an overview of these rules and the relevant formal filing requirements, and also offers some key practice tips to remember when preparing for an administrative trial. Read more

Requesting a Motion for Reconsideration at PTAB
An aggrieved party can ask for reconsideration after an unfavorable ruling by the Patent Trial and Appeal Board, but nearly all requests are denied. The Board is unlikely to reverse itself absent proof of clear, unambiguous errors. Here’s what to consider when preparing a motion. Read more

Stay or Go! Tracking District Court Stays Pending Parallel PGRs
Recent data from the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board indicates that 80 percent of inter partes review and 90 percent of covered business method review proceedings are directed to patents involved in parallel litigation in U.S. district courts. With these parallel proceedings, it is common for a petitioner to file a motion to stay the district court litigation until the IPR or CBM review proceedings have been completed. This Commentary discusses IPRs, CBM reviews, the factors district courts consider in granting or denying motions to stay, and other relevant considerations important to both the patent owner and petitioner. Read more

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