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IP Alert
IP Alert: Some Claims Do Survive IPR Proceedings; Be Timely in Submitting Evidence

May 23, 2014

Contrary to popular belief, inter partes review (IPR) proceedings are not universally a “death panel” for patent claims. A trio of recent decisions from the Patent Trial and Appeal Board (PTAB) sustaining the patents at issue may offer comfort to patentees involved in an IPR. One of these cases provides practice guidance illustrating the importance of presenting evidence in a timely fashion.

On April 11, 2014, the PTAB issued two final decisions, both styled ABB Inc. v. ROY-G-BIV Corp., in which the PTAB denied ABB’s request for cancellation of certain claims of two of ROY-G-BIV’s patents. In both cases, the patentee prevailed because the PTAB deemed testimony from the patentee’s expert to be more convincing than the expert testimony from petitioner’s expert.

Two weeks later, on May 1, the PTAB issued a final decision in Corning Inc. v. DSM IP Assets B.V. denying Corning’s request for cancellation of claims 1–14 in U.S. Patent Number 6,438,306. In this IPR, after the patentee DSM had responded to the petition, Corning attempted to submit evidence that purported to show that the prior art inherently met the claim limitations under review. The evidence was based on post-petition experimental tests and on testimony of three witnesses that did not testify in support of the original petition.

DSM, the patentee, countered with a motion to exclude the post-petition evidence. The PTAB noted that the proper method to challenge such “new” evidence in a reply is to bring it to the Board’s attention in a conference call or during oral argument as set forth in an earlier PTAB decision, Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co. But the PTAB permitted DSM’s motion in this case because it had instructed DSM to file the motion to exclude.

DSM contended that the PTAB should exclude Corning’s evidence because (1) Corning was relying on the evidence to establish a prima facie case of unpatentability; (2) Corning allegedly could and should have presented this evidence with its original petition; and (3) DSM had no opportunity to respond.

Under 37 CFR § 42.23(b), petitioner’s reply “may only respond to arguments raised in the corresponding opposition or patent owner response.” The Office Patent Trial Practice Guide (Aug. 14, 2012) states in pertinent part that “[e]xamples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claims, and new evidence that could have been presented in a prior filing.” Here, the PTAB decided that Corning’s evidence constituted a new theory that would operate to restart the case, and that consideration of this evidence would be unfair to DSM because of the lack of a rebuttal period. The PTAB further concluded that the issue was dispositive of the case, because, without this evidence, Corning could not establish that the prior art inherently met the claim limitations. The PTAB suggested that Corning might have been permitted to introduce the evidence had it sought leave (and had DSM been permitted an opportunity for rebuttal).

These decisions confirm that IPRs are not necessarily a “death panel” for patent claims, as has been widely reported. Additionally, the Corning decision is significant in that it demonstrates how the PTAB applies Rule 42.23(b) as concerns the timing of evidentiary submissions. IPR participants are encouraged to review this decision when contemplating the submission of evidentiary materials.

For more information, please contact Fitch Even attorneys Kendrew H. Colton or Kenneth W. Hairston, the authors of this alert.

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