Recent Decisions

Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082, -00084 (Apr. 25, 2018) (Paper 13)

Takeaway (1) (Informative): A motion to amend that proposes substitute claims (versus a motion to amend that simply cancels claims) will ordinarily be treated as contingent, meaning that the Board will normally consider a proposed substitute claim only if a preponderance of the evidence establishes that the patent claim it replaces is unpatentable.  “A patent owner should adopt a claim-by-claim approach to specifying the contingency of substitution, e.g., which claim for which claim and in what circumstance.”

Takeaway (2) (Informative): Petitioners have the burden of persuasion to show that any proposed substitute claim is unpatentable by a preponderance of the evidence. The Board itself also may justify a finding of unpatentability by reference to evidence of record in the proceeding, as it must do when a petitioner ceases to participate.  “Thus, the Board determines whether substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner.”

Takeaway (3) (Informative): Before considering the patentability of any substitute claims, the Board first must determine whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121:

Colas Sols. Inc. v. Blacklidge Emulsions, Inc., Case IPR2018-00242 (Feb. 27, 2018) (Paper 9)

Takeaway (1) (Informative): A party who files a declaratory judgment action challenging the validity of a patent is generally barred under 35 U.S.C. § 315(a)(1) from subsequently challenging the patent in inter partes review through a standalone IPR petition or through a petition filed together with a motion to join existing IPR proceedings to which it is not a party under 35 U.S.C. § 315(c).

Takeaway (2): A party who files a declaratory judgment action challenging the validity of a patent might not be barred from subsequently challenging the validity of the patent in IPR proceedings, despite the bar set forth in 35 U.S.C. § 315(a)(1), where the party dismisses the declaratory judgment action without prejudice before petitioning for IPR.

Argentum Pharm. LLC v. Alcon Research, Ltd., Case IPR2017-01053 (January 19, 2018) (Paper No. 27)

akeaway (1):
A party moving to file exhibits under seal bears the burden of showing “good cause” for the relief requested. A failure to show good cause will result in the exhibits at issue being expunged from the record and any argument or evidence in a substantive brief that relies on that expunged exhibit shall be accorded no weight.

Takeaway (2):
Prior to filing a motion to seal, counsel is required to confer or attempt to confer in good faith with the opposing party in an effort to come to an agreement as to the scope of the proposed protective order. Sending a letter to opposing counsel on the same day the motion is filed and stating that no response was received prior to the filing of the motion does not constitute a good faith effort to confer.

Takeaway (3):
A party who successfully files information under seal assumes the risk that its confidential information will become public if that information is relied upon in a final written decision.

Facebook, Inc. v. Skky, LLC, Case CBM2016-00091 (Sept. 28, 2017) (Paper No. 12)

Takeaway (1) (Precedential): The Board treats disclaimed claims as if they never existed.  In deciding whether to institute review, the Board will not consider claims that the patent owner previously disclaimed (before the decision whether to institute review). 

Takeaway (2): Where a patent includes some claims that would be eligible for CBM review and others that would not, a patent owner might avoid CBM review by disclaiming those claims eligible for CBM review before the Board decides whether to institute.