Andrew Lowes and Clint Wilkins in Law360: PTAB Not Straitjacketed in Institutional Decisions

01/06/2016

In three recent decisions, the Federal Circuit confirmed that the Patent Trial and Appeal Board has considerable latitude to institute an inter partes review or a covered business method review based on an independent reading of prior art in view of the facts provided in a petition, and is not limited to the explicit invalidity grounds raised in the petition. The three decisions continue to demonstrate a flexible approach to finding patent claims obvious, provided the facts are stated sufficiently in the petition to support the finding. As a result, board decisions to institute an IPR or CBM are immune from appeal, and the procedural framework for PTAB trials allows for such latitude without violating due process.

First, in Belden Inc. v. Berk-Teck LLC, the Federal Circuit reminded practitioners of the procedural framework established by the America Invents Act for IPRs.[1] The procedure: (1) begins with a petition from a party challenging patent validity, followed by (2) a preliminary response from the patent owner (PO) and (3) then a decision whether to institute. If an IPR is instituted, the procedure further includes: (4) a post-institution response from PO followed by (5) a reply from the petitioner. The petition, response(s), and reply may each be submitted with a supporting expert declaration, which serves as direct testimony. A party has the right to cross-examine an affiant who has submitted testimony, and both parties have a right to an oral hearing.

Furthermore, “in the event that cross-examination occurs after a party has filed its last substantive paper on an issue, ... the Board may authorize the filing of observations on that cross-examination, though the observations are to be brief and nonargumentative.”[2] Finally, surreplies are allowed with board permission, and a party has the right to move to exclude evidence.[3] Observations, surreplies and motions to exclude give a PO options to respond to petitioner replies and build a record to rely on at the oral hearing.

Excerpted from Law360. To read the full article, please click here (subscription required).

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