Align Technology, Inc. v. ITC July 18, 2014 Federal agencies such as the International Trade Commission and the United States Patent and Trademark Office enjoy broad administrative authority, and in the case of the ITC, independence. [1] These ...

US PTO Litigation Alert™: The Patent Office Can Commiserate With the ITC In Administrative Procedure Act Woes

The Patent Office Can Commiserate With the ITC In Administrative Procedure Act Woes

Align Technology, Inc. v. ITC July 18, 2014 Federal agencies such as the International Trade Commission and the United States Patent and Trademark Office enjoy broad administrative authority, and in the case of the ITC, independence. [1] These agencies’ authority, though broad, is not unbounded. The Administrative Procedure Act (APA) reins in that authority by […]

APJs Confirm a Deposition Protocol

The issue of when an attorney defending a deposition in an IPR proceeding may privately speak with his or her witness arose this week in Focal Therapeutics v. Senorex (IPR2014-00116). According to counsel for the Patent Owner, when he had concluded his cross-examination of the Petitioner’s expert witness, “Petitioner’s counsel initiated a private conference with […]

A Likely Uphill Battle for Synopsys In Suit Against The Patent Office

In a complaint recently filed in a Virginia federal court, Synopsys accused the Patent and Trademark Office (“the Patent Office”) of prescribing rules and regulations for inter partes review (77 Fed. Reg. 48727) that are procedurally defective and ultra vires. Synopsys took issue specifically with Patent Office’s Rules 42.108(a) and (b), which govern the institution […]

Scope of Live Testimony in Final IPR Hearings

Last week we reported that in K-40 Electronics v. Escort (IPR2013-00203), the APJs had granted the Patent Owner’s request that its inventor be allowed to give live testimony on his invention’s conception date, presumably to remove the references as prior art.  The APJs explained that live testimony was appropriate in view of the type of […]

Terminal Disclaimer does not Change Claim Construction Standard, at least not in the Final Stages of an Inter Partes Review

Patent Owners have criticized the new AIA post-issuance proceedings for a number of reasons.  The loudest criticism, however, has been directed at the APJs’ giving challenged patent claims their “broadest reasonable construction” – making them more vulnerable to attack from the prior art.  Only where the patent has expired (and the Patent owner may no […]

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