U.S. PTAB Issues First Final Decision in an Inter Partes Review

15 November 2013 Publication
Author(s): Jeanne M. Gills Stephen B. Maebius Harold C. Wegner

Legal News Alert: Intellectual Property

On November 13, 2013, the U.S. Patent Trial and Appeal Board (PTAB) issued its first final decision in an inter partes review (IPR) proceeding brought by Garmin under the new administrative procedures established by the America Invents Act of 2012 (Garmin v. Cuozzo, IPR2012-00001). Consistent with its initial finding of unpatentability, the PTAB found all claims unpatentable and denied the patent owner’s motion to amend in the final decision, which numbered 49 pages in length. The PTAB had initially granted Garmin's petition as to certain claims and denied it as to others in a decision dated January 9, 2013, meaning that it reached its final decision in only about 10 months, well within the 12-month time limit required by statute. A copy of the full decision is available here.

Among the important lessons to be drawn from this first final decision in an IPR are the following:

Lesson 1: Broadest Reasonable Interpretation. The PTAB continues to stick to its standard of applying the broadest reasonable interpretation to the claims of a patent. The PTAB is therefore not bound by district court Markman rulings, which is a point favorable to petitioners.

Lesson 2: Cross Examination of Experts. The PTAB cited to the cross-examination testimony of one of the experts in its decision, demonstrating that the use of limited discovery in IPRs (the right to depose a declarant) can be important to the outcome.

Lesson 3: Very Restrictive Amendment Options. The patent owner’s ability to amend claims in an IPR is very limited, given the petitioner's ability to attack such proposed amendments and the narrow scope of substitution allowed by the PTAB.

Lesson 4: Keeping an Eye on the Federal Circuit; Possible Amicus Participation. Companies interested in shaping the development of the IPR patent practice will need to carefully monitor upcoming Federal Circuit appeals of PTAB decisions to identify cases where amicus participation may be desirable by industry groups. For example, in this case, the PTAB dismissed a motion to exclude certain evidence without deciding it on the grounds that it was moot in view of other findings. This raises the question of what may happen with such an undecided motion if the patent owner files an appeal to the Court of Appeals for the Federal Circuit.

More than 500 IPRs have been filed to date, and a wave of final decisions is expected over the next few months. Future decisions will shed further light on when to use and when not to use the IPR procedure for deciding patent validity based on prior art grounds. As more insights are gained, additional client alerts will be issued to share the lessons learned.

Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and our colleagues. If you have any questions about this update or would like to discuss this topic further, please contact your Foley attorney or the following:

Jeanne M. Gills
Chicago, Illinois

Stephen B. Maebius
Washington, D.C.

Harold C. Wegner
Washington, D.C.

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