How Creativity, Experience and Foresight Lend Themselves to Inter Partes Reviews (IPRs)

October 1, 2018 | Category: Patent Litigation, Patents

In Mighton Products Limited v. Vision Industries Group, No. 18-1034 (August 7, 2018), the Federal Circuit affirmed the Patent Trial and Appeal Board’s final decision concluding that all 50 claims of US Patent No. 8,881,461 were unpatentable, and denying the patent owner’s contingent motion to amend.  Foreseeing a potential change in law and submitting evidence at the PTAB under both standards allowed for an unassailable victory that did not require the additional delay and cost of a remand.  

We represented a patent owner in two of the earliest contested IPRs, where the petitioner challenged multiple claims across two patents.  In that matter, we engaged two technical experts, dividing claims and issues between them. This allowed each expert to fill gaps in the other’s experience or background, as well as enabling them both to efficiently work through a large amount of material. The ways in which multiple experts can be used persuasively and synergistically are limited only by a litigant’s imagination.

Our early experience with IPRs has permitted us to have some impact on the law. For example, in Polaris Wireless v. True Position, IPR 2013-00323, the patent owner claimed priority through a chain of continuation applications where each link in the chain shared a common inventor. The challenged patent, however, did not share a common inventor to the first priority application. Without a Federal Circuit precedent on point, the Board agreed with our argument that 35 U.S.C. §120 required such common inventorship. The Federal Circuit affirmed without separate opinion.

We have also pressed novel issues where the Board opposed our position and the Court ultimately affirmed it in another case. In Opus KSD, Inc. v. Incisive Surgical, IPR2017-01438, the patent owner disclaimed the claims in the challenged patent prior to an institution decision, and argued for dismissal of the petition in its Preliminary Response. We urged the Board to treat the disclaimer as a request for adverse judgment, but the Board declined to do so. The Federal Circuit agreed with our arguments in Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345 (Fed. Cir. 2018). In that case, the Court upheld the Board’s entering of an adverse judgment prior to an institution decision after the patent owner disclaimed the challenged claims.

In Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015), representing the appellant, we argued to a panel of the Federal Circuit that the Board’s decision on whether an IPR petition is time barred under §315(b) was appealable. The panel disagreed. The Court sat en banc in Wi-Fi One, LLC v. Broadcom Corporation, 878 F.3d 1364, 1375 (Fed. Cir. 2018) to consider whether its Achates decision should be overruled. Nearly four years after we argued the issue, the Court concurred with our argument, saying “[W]e hold that the Director’s time-bar determinations under § 315(b) are not exempt from judicial review, and overrule Achates’s contrary conclusion."

At McGeary Cukor LLC, we represent clients in a variety of intellectual property (IP) practice areas, including patent-specific services and IP litigation. Our experienced patent and trial attorneys bring a wealth of big firm experience to address your IP needs, while maintaining the personalized attention, responsiveness and agility of a private firm.

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