Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 25
In This Issue
· Taking Stock of IPR, CBM and PGR Petitions
· Latest Versions of G&B Spreadsheets
· Recent Developments In The Law
Jill M. Browning
Taking Stock of IPR, CBM and PGR Petitions
There were 176 petitions filed in June, challenging 128 patents. This was the most petitions filed in any month since August 2015. The Board continues to institute trial in a high number of petitions -- 89 of 138 decisions in June, although this institution rate is lower than in past months.
The Board issued 62 final written decisions in June, 54 in IPRs, 6 in CBMs, and 2 in PGRs, covering 45 unique patents. The Board cancelled 73% of the claims it ruled on, leaving on 27% in tact.
Latest Editions of Spreadsheets
Please click here for the latest G&B spreadsheet reflecting all IPR filings through August 31, 2016
Please click here for the latest G&B spreadsheet reflecting all CBM filings through August 31, 2016
Please click here for the latest G&B spreadsheet reflecting all PGR filings through August 31, 2016
Recent Developments In The Law
An Overview of Amendments to the PTAB Rules
The final rule on Amendments to the Rules of Practice for Trials Before the PTAB issued on April 27, 2016.
The amended rule 42.200(b) clarified that either party can request application of the Phillips-type standard rather than the broadest reasonable interpretation standard set out in In re Cuozzo Speed Techs. LLC, if the party can certify that the patent will expire within 18 months from the date of filing the AIA petition.
Amended Rule 42.107 now allows the patent owner to provide testimonial evidence before institution. In addition, the petitioner can seek leave to reply to the patent owner’s preliminaryoresponse.
However, the petitioner must show good cause for seeking leave. An example of good cause may be that the patent owner’s testimonial evidence raises a genuine issue of material fact.
The new rules also provide a Rule 11-type certification in Rule 42.11, which may provide a basis for a party to file a motion for sanctions for noncompliance or violation of the duty of candor. The PTAB does not expect to impose sanctions frequently, but the rule provides notice to the public on what the Board expects in regards to compliance. The movant must serve the motion at least 21 days before seeking authorization to file the motion. In addition, the Board can issue an order sua sponte requiring a party to show why they should not be sanctioned.
Intelligent Bio-Systems, Inc., v. Illumina Cambridge Ltd.,