[IPR] Standard - Preponderance of the evidence (different from the clear and convincing standard in district courts)

35 U.S.C. 316 (e) states that the PTAB determined that a petitioner in an inter partes review proves unpatentability by a preponderance of the evidence (, which is different from the standard used in the district courts).

What's the impact of this difference? In Novartis AG v. Noven Pharm. Inc., 853 F.3d 1289 (Fed. Cir., 2017), the Federal Circuit disagreed with the patent owner's arguments that its patent should not be invalidated by the PTAB because the same patent was not invalidated by the district court.

The Federal Circuit cited the Supreme Court's Cuozzo Speed Techs., LLC v. Lee, ___ U.S. ___, 136 S.Ct. 2131, 2146, 195 L.Ed.2d 423 (2016):

[a] district court may find a patent claim to be valid, and the [USPTO] may later cancel that claim in its own review.... This possibility, however, has long been present in our patent system, which provides different tracks — one in the [USPTO] and one in the courts — for the review and adjudication of patent claims. As we have explained ..., inter partes review imposes a different burden of proof on the challenger. These different evidentiary burdens mean that the possibility of inconsistent results is inherent to Congress'[s] regulatory design.

Then, the Federal Circuit held that the prior decisions were not controlling on the PTAB.

August 2019 - Virginia CLE online class - PTAB-Structure, Decision Making, and Ex Parte and Inter Partes Proceedings

Today, I just listened to the CLE online class presented by an attorney from Stern and a PTAB judge.

Hon. James T. (Jay) Moore, U.S. Patent Trial and Appeal Board / Alexandria

Jason D. Eisenberg, Sterne, Kessler, Goldstein & Fox PLLC / Washington, DC

IPRs

IPR2016-01494 (USP 8,274,991)
IPR2016-01704 (USP 8,565,256)
IPR2016-01861 and -01865 (USP  9,125,051)

Patent Owner contends that the error in claim 4 as originally issued stems from a mistake by the Office.

Petitioner opposes Patent Owner’s request arguing that permitting such a correction to claim 4 would be unduly prejudicial to Petitioner at this stage of the proceeding because the Petition addresses claim 4 in its original form and the proposed correction substantively alters claim 4, which renders the Petition potentially inadequate as it relates to an altered version of claim 4.

H-W Technology, L.C. v. Overstock.com, Inc., 758 F.3d 1329 (Fed. Cir. 2014)
Southwest Software, Inc. v. Harlequin Inc., 226 F.3d 1280 (Fed. Cir. 2000)

"Patent Owner correctly states that the Federal Circuit in Southwest Software and subsequently in H-W Technology held that a certificate of correction is only effective for causes of action arising after it was issued."

IPR - Which ways out

http://www.skgf.com/uploads/1378/doc/Westlaw_IPR_Which_Way_Out.pdf

[PTAB] Board Trial Rules and Practice Guide

https://www.uspto.gov/patents-application-process/appealing-patent-decisions/resources/board-trial-rules-and-practice

• Trial Practice Guide: 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) (“Practice Guide”), https://www.uspto.gov/sites/default/files/ip/boards/bpai/trial_practice_guide_74_fr_48756_081412.pdf
• Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board (2016), http://www.ipwatchdog.com/wp-content/uploads/2016/04/2016-07381-1.pdf

• Motion to Amend (filed by Patent Owner) (37 C.F.R. § 42.121(a)): MasterImage 3D, Inc. v. RealD, Inc., https://www.uspto.gov/sites/default/files/documents/MasterImage%203D%20v%20RealD%20IPR2015-00040_Paper%2042.pdf

• Testimony Guidelines: Appendix D of the Trial Practice Guide.

To the extent it is determined to be necessary to include A in B,

Patent No. 6,071,103
Petition For Inter Partes Review

Although not believed to be real-parties-in-interest in the present Petition, out of an abundance of caution, Petitioner notes that it expects that a substantially similar petition is being filed by Nissan North America, Inc. To the extent it is determined to be necessary to include parties interested in that petition in the present Petition, the additional real-parties-in-interest are listed in the contemporaneously filed petition by Nissan North America, Inc. et al.