March/April 2017
IP Litigator
By Rachel L. Emsley; Cory C. Bell; Jason E. Stach
Authored by Cory C. Bell, Rachel L. Emsley, and Jason E. Stach
With the addition of appeals from the last four-and-a-half-years of Patent Trial and Appeals Board trials (inter partes review, post grant review, and covered business method review) (PTAB trials), Federal Circuit appeals from the U.S. Patent and Trademark Office (PTO) decisions have increased significantly. These appeals, together with traditional appeals from PTO decisions, have eclipsed the number of appeals from district court decisions last year. (See Exhibit1.)1
Exhibit 1
Through February 15, 2017, the Federal Circuit has decided approximately 168 cases originating from PTAB trials, and the Supreme Court already has decided one case in Cuozzo Speed Techs., LLC v. Lee.2 This growing body of appellate precedent holds many lessons for stakeholders in PTAB trials, including some highlighted in this article. From these decisions, we have learned when PTAB final written decisions will receive substantial deference and when they will not. By contrasting the few cases resulting in complete reversal with those being remanded or remanded-in-part, we can infer how parties can focus their appeal for the best chances of success, and ways PTAB practitioners can improve their briefing to secure a favorable decision that will withstand appeal. With the PTAB now handing several remands, we are catching the first glimpses into post-appeal procedure.
The Supreme Court provided two holdings in Cuozzo, which both, in the broad sense, indicate that the PTAB will enjoy substantial deference in appeals. First, in Cuozzo, the Supreme Court considered whether the America Invents Act (AIA) permitted judicial review of the PTAB’s decision to institute review.3 It does not, although the Court left open the possibility of review in certain circumstances.4 Second, the Supreme Court considered whether the PTO’s choice in the claim construction standard used in PTAB trials (the broadest reasonable interpretation or BRI) is a reasonable exercise of the agency’s rulemaking authority.5 Applying a Chevron analysis, the Supreme Court determined that because the AIA statute contains no provision unambiguously directing the PTAB to use one standard over another, the PTO has "leeway to enact rules that are reasonable in light of the text, nature, and purpose of the statute."6 The Supreme Court was thus deferential to the PTO on both issues.
The larger body of growing precedent in the Federal Circuit also shows substantial deference given to the PTAB’s final written decisions and to the rules and regulations the PTO has promulgated to facilitate PTAB trials. Through February 15, 2017, the Federal Circuit has affirmed approximately 78 percent of the cases reaching final decision (128/164),7 and about 72 percent (92/128) have been affirmed via Rule 36, where the Federal Circuit does not provide a written opinion. Only three cases have been reversed entirely8 and only about 17 percent (28/164) have seen a change in outcome (remand, remand-in-part, reversal-in-part, or reversal) on appeal. (See Exhibit 2.) Appeals from PTAB trials, however, are increasing in volume,9 and the trend is toward an increase in "successful" appeals beginning with zero in 2014, and with an increasing number of cases seeing at least a remand-in-part in 2015 and 2016 (4 and 23, respectively). Thus, it appears that the substantial deference afforded to the PTAB may be eroding as more and more appeals from PTAB trials reach the Federal Circuit and Supreme Court.
The Supreme Court ratified, in Cuozzo, the PTAB’s use of the BRI standard for claim construction.10 But, additional Federal Circuit decisions teach us that BRI does not amount to carte blanche for the PTAB to apply any construction. Nearly a third (9/28) of the cases in which the Federal Circuit reversed or remanded the PTAB’s determination turned on claim construction.11 In eight of these cases (all but Respironics, in which the PTAB was found to have improperly applied a claim construction to introduce claim limitations), the Federal Circuit found that the PTAB used an improper claim construction in its analysis.
In Microsoft Corp. v. Proxyconn, Inc., for example, the Federal Circuit vacated unpatentability determinations and remanded to the PTAB because it had applied "unreasonably broad construction[s]."12 The Court explained that the PTAB cannot "construe claims during IPR so broadly that its constructions are unreasonable under general claim construction principles."13 This means that claims, under BRI, must: (1) "always be read in light of the specification and teachings in the underlying patent"; (2) "reasonably reflect the plain language and disclosure"; and (3) "be consistent with the one that those skilled in the art would reach."14 To determine the BRI, the PTAB "should also consult the patent’s prosecution history."15 In other words, the BRI may search for the "broadest" interpretation, but it must still be reasonable in view of the intrinsic record as understood from the point of view of a person of ordinary skill in the art. Focusing an appeal on a claim construction may be an effective strategy when the facts and record support it.
Exhibit 2
In the few cases that thus far have been reversed, one common theme arises: The Petitioner bears the burden of proof on unpatentability and must present the PTAB with sufficient evidence to make its findings. At first glance, the distinction between remanded and reversed final written decisions seems simple: If the appeal turns on legal issues with de novo review, the Court will not remand. For example, the Federal Circuit has reversed findings in cases involving 35 U.S.C. § 101,16 the legal conclusion of obviousness,17 and written description18 without remand. In contrast, the Federal Circuit has remanded many cases after rejecting the claim construction adopted by the PTAB for further factual determinations consistent with what the Court deemed the proper construction. A closer look at these cases reveals that the PTAB trial record plays a significant role in whether the Federal Circuit remands cases that turn on factual questions.
While the Federal Circuit normally remands cases after rejecting a claim construction adopted in the final written decision,19 it does not always. In Cutsforth, Inc. Motivepower, Inc., No. 2015-1314, the Federal Circuit reversed the PTAB after rejecting the Board’s claim construction and instead adopted the construction proposed by Cutsforth during the IPR trial.20 The IPR trial involved two anticipation grounds: (1) Ohmstedt, and (2) Krulls. For the Ohmstedt ground, the Court reversed instead of remanding because (i) "MotivePower … preserved no argument that Ohmstedt discloses the 'projection' limitation under Cutsforth’s construction" and (ii) "[e]ven if MotivePower had preserved this argument, under the construction we adopt today, no reasonable fact finder could conclude that Ohmstedt’s ramps 59" meet the claim limitation.21 Similarly, for the Krulls ground, the Court reversed instead of remanding because (i) "No substantial evidence supports the Board’s finding of anticipation by Krulls"; (ii) "MotivePower preserved no argument that Krulls anticipates the claims-at-issue under Cutsforth’s construction"; and(iii) "MotivePower did not dispute before the Board that the [claim] limitation cannot be met under Cutsforth’s construction."22 Accordingly, instead of remanding for proceedings consistent with the Federal Circuit’s construction, as the Federal Circuit has done in several cases,23 the Court in Cutsforth found remand to be unnecessary. This changed outcome appears to have been based at least in part on the fact that, after a review of the record, MotivePower had the opportunity to address Cutsforth’s construction below, but did not do so.
In Arendi v. Apple, the key question was whether the PTAB erred in finding that it would be "common sense" to a person of ordinary skill in the art to have a computer program search, in a database, for a telephone number that is detected in a document when an "[a]dd to address book" option disclosed in the asserted reference was selected.24 The Federal Circuit reversed the PTAB’s decision, which relied on "conclusory statements and unspecific expert testimony regarding searches in general."25 In reversing the decision and declining to remand, the Federal Circuit explained that this is "not a case where a more reasoned explanation than that provided by the Board" and "that the application of common sense to the evidence of record would lead to a conclusion that the petitioner failed to meet its burden of establishing unpatentability."26 Again, the Federal Circuit reversed based on an examination of the PTAB trial record, and specifically considered what Petitioners presented in the prima facie case.
In In re Magnum Oil Tools Int’l, Ltd., the Federal Circuit reversed the PTAB’s determination of obviousness, concluding that the PTAB improperly had shifted the burden to Patent Owners in an obviousness analysis when it focused its decision on the lack of Patent Owner’s "rebuttal" evidence.27 In the PTAB, the Petitioners had provided only "conclusory statements" without "articulat[ing] specific reasoning, based on evidence of record to support the legal conclusion of obviousness."28 Specifically, Petitioners had "failed to articulate a motivation to combine the specific teachings of [three references] to achieve the claimed invention," but instead "merely attempted to incorporate its arguments based on [a fourth reference] to its obviousness analysis, without presenting particularized arguments explaining why those arguments [from the fourth reference] would be cross-applicable."29 The Federal Circuit explicitly rejected the PTO’s position that the PTAB "is free to adopt arguments on behalf of petitioners that could have been, but were not, raised by the petitioner during an IPR," holding that instead, the PTAB "must base its decision on arguments that were advanced by a party, and to which the opposing party was given a chance to respond."30 Thus, the Federal Circuit’s decision to reverse pointed back, again, to the original arguments in the petition.
Even with only a few cases to guide practitioners, it has become clear that to ultimately succeed and withstand appeal, a Petitioner must recognize that it bears the burden upfront, in the very first paper. The Federal Circuit has criticized the Board for relying on new argument in a Petitioner’s Reply or evidence introduced for the first time at an Oral Hearing, because this deprives the Patent Owner of its right to respond.31 As the three complete reversals show, the Petitioner will not be given a second bite at the apple with a remand. Thus, even when arguing factual issues on appeal, parties looking to reverse a final written decision should not only point out the flaws in the PTAB’s analysis, but should alert the Court to evidence or deficiencies in the PTAB trial record that would moot any potential remand.
While deficiencies in the Petitioner’s initial paper and evidence may provoke a reversal, the PTAB’s failure to provide sufficient analysis and explanation in its final written decision may provoke the Federal Circuit to remand. Second only to errors in claim construction, "insufficient analysis" represents 20 percent (6/28) of the cases not fully affirmed on appeal.32 For example, in Personal Web Techs., LLC V. Apple, Inc., the Federal Circuit remanded finding that the PTAB had not explained how a reference teaches a claim limitation when the portion of the reference cited by the Board was not "self-explanatory."33 Further, the PTAB had not examined how the combination of references was supposed to work.34
The Federal Circuit has found, in several instances, that the PTAB’s Graham factor analysis was incomplete; in particular, lacking explanation of a motivation to combine. For example, in In re Nuvasive, Inc., the Court found that it could not "reasonably discern" the PTAB’s reasoning as to motivation to combine because it "failed to articulate a reason why the PHOSITA would have been motivated to modify” the primary references with a secondary reference to include the claim feature.35 In Cutsforth, Inc. v. Motivepower, the Court similarly found that the PTAB did not fully explain why a person of ordinary skill in the art would find the proposed modifications to the base reference obvious.36
In its recent decisions, although the Federal Circuit chose to remand when the PTAB’s reasoning was deemed insufficient, the Court referenced some older cases that suggest such insufficiency could result in reversal. For example, the Court’s decision in Personal Web cites In re Sang Su Lee,37 which dealt with appeals in the prosecution context.38 In re Lee searched for the line between when an unreviewable agency opinion should be reversed or remanded by looking to prior opinions of the DC Circuit, specifically, Radio–Television News Directors Ass’n v. FCC,39 and Checkosky v. Securities & Exch. Comm’n.40 The Court described the line between reversal and remand as "the fine line between agency reasoning that is so crippled as to be unlawful and action that is potentially lawful but insufficiently or inappropriately explained."41 The Court explained that "in the former circumstance, the court’s practice is to vacate the agency’s order, while in the latter the court frequently remands for further explanation … while withholding judgment on the lawfulness of the agency’s proposed action."42 Thus, because we have so far seen the Court remand when it finds a final written decision lacking, we may, in the future see reversals in some such cases.
The PTAB rules do not provide a post-remand procedure, and the number and complexity of the issues on remand has varied between proceedings, making it difficult to predict the process and outcome post-appeal. The Federal Circuit, for the most part, has declined to involve itself in dictating what should happen on remand. In the first case remanding for insufficient explanation by the PTAB, the Court gave the Board wide discretion to conduct the remand as it sees fit, saying, "[w]e do not direct the Board to take new evidence or, even, to accept new briefing" and "[t]he Board may control its own proceedings, consistent with its governing statutes, regulations, and practice."43 Since then, the Court has given more specific instructions. In Personal Web, the Court stated that "[t]he remand is not for explanation or clarification of what the Board meant in the decision we have under review now, or what it considered in reaching that decision," but "[t]he remand is for the Board to reconsider the merits of the obviousness challenge, within proper procedural constraints."44 In John D’Agostino v. MasterCard Int’l Inc., the Court advised that "[t]he Board on remand may consider other issues, for example, as to Cohen and as to the "one or more merchants" claims, that the parties have preserved."45 But, these instructions fall short of dictating the process and instead still defer to the PTAB’s "procedural constraints" and discretion.
Although at present, there is a lack of official guidance from the PTO on how remands will proceed, some trends have emerged.
The PTAB has no rule on post-remand timing—either for the parties to submit briefing or for the panel to issue a new decision—and the PTAB has held that the statutory 18-month deadline under 35 U.S.C. § 316(a)(11) does not apply.46 This has resulted in some uncertainty on the time it will take to get remanded issues resolved.
First, there has been a significant difference in the time before any activity can be seen in the record. In most cases, there is some activity in the record, either a telephone conference with the parties or an Order, within a month of the Federal Circuit issuing a mandate.47 But some cases have taken several months before any action—the longest period being over four months.48 In that case, the PTO still has not issued a new decision more than six months after it indicated that the PTAB would not allow additional briefing from the parties.49 In most cases, a call request from the parties triggered PTAB action.50 In the case that took four months, the panel issued an Order noting that the parties had not reached out to the Board.51 Another panel issued an Order requiring the parties to confer after one month had passed without the parties taking action.52
Second, the time for the PTAB to reach an ultimate decision following remand also has varied greatly, from three to seven months after the Federal Circuit issued the mandate.53 As discussed above, one case is still awaiting a decision after more than 10 months.54 Where briefing was allowed, the time for the panel to issue a decision once the parties completed briefing contributed substantially to the length of time before the ultimate decision.55
On remand, the parties cannot file additional briefing as a matter of right. Instead, the panel must authorize any briefing.56 In each case when the parties requested a telephone conference, the panel granted additional briefing–even in cases where one party opposed.57 On such a call, the parties have been asked to discuss:
In the two cases where additional briefing was denied, the panel issued an order prior to the parties requesting a call.59 Accordingly, if briefing is desired, the parties would be well-advised to initiate the telephone conference soon after the mandate issues remanding the case from the Federal Circuit.
While many panels have permitted briefing on remand, the process has varied from panel to panel; page limits have ranged from five to 15 pages,60 and parties have filed briefs simultaneously61 or in a more traditional brief-opposition fashion.62 But one trend has emerged—the PTAB is unlikely to permit new evidence.63 In fact, most orders granting briefing have expressly required that the parties identify where the argument and/or evidence in the remand briefing was presented in the original record prior to appeal.64 In at least one case, however, the PTAB has permitted new evidence to be introduced because it "would be helpful to the panel in deciding the issue on remand."65 In another case, the PTAB permitted a supplemental motion to amend.66 While the PTAB may be trending away from considering the record closed prior to the remand, too few cases have entered this process to make predictions for future cases.
Because only a few cases have reached an end result after remand from the Federal Circuit, there is insufficient data to identify trends in the ultimate results. To date, the PTAB has both reaffirmed and reversed its holdings of its final written decisions on remand. For example, it has reaffirmed a decision finding the claims unpatentable,67 reaffirmed a decision that the petitioner had failed to carry its burden to show unpatentability,68 and also reversed prior unpatentability holdings based on the Federal Circuit’s decision.69 In one case, the PTAB terminated the proceeding after the parties filed a joint motion to terminate in view of settlement.70 With the mixed and fact-dependant results, only time will tell whether a trend will emerge.
With only four-and-a-half-years of the AIA regime and with about 168 appeals reaching decision at the Federal Circuit from PTAB trials, trends are difficult to discern and predictions difficult to make. On the Federal Circuit side, the high affirmance of the final written decisions (78 percent) indicates that the Court believes the PTAB is by-and-large fulfilling its statutory duties. In cases where the Board’s findings are rejected, whether the Court remands or reverses depends largely on the already-established record from the PTAB trial. On the PTAB side, following a remand, the procedure remains a bit of a mystery. Certainly, the successful appellant is not guaranteed a win. As remands to the PTAB continue, standard procedure at the PTAB post-appeal will surely develop and the statistics may begin to reveal trends. In the meantime, one thing seems certain: The record at the PTAB should be built with appeal in mind, because that record can mean the difference between reversal and remand, and ultimate success.
1 United States Court of Appeals for the Federal Circuit, Appeals Filed in Major Origins, http://www.cafc.uscourts.gov/sites/default/files/the-court/statistics/FY16_Caseload_by_Major_Origin.pdf.
2 Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct., 2131, __ U.S. __ (2016).
3 Id. at 2139.
4 Id. at 2141-2142 (noting possible exceptions where an institution decision is "properly reviewable in the context of [35 U.S.C.] § 319 and under the Administrative Procedure Act, which enables reviewing courts to 'set aside agency action' that is 'contrary to constitutional right,' 'in excess of statutory jurisdiction,' or 'arbitrary [and] capricious.'").
5 Id. at 2144.
6 Id. at 2142.
7 Cases for which rehearing or rehearing en banc has been granted and is pending have been excluded for the purpose of examining the outcome statistics described herein.
8 The following cases have been reversed on all issues, without remand: Cutsforth, Inc. v. MotivePower, Inc., 643 Fed. Appx. 1008 (Fed. Cir. 2016); Arendi S.A.R.L. v. Apple Inc., et al., 832 F.3d 1355 (Fed. Cir. 2016), petition for cert. filed (U.S. Nov. 8, 2016) (No. 16-626); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016).
9 See Exhibit 1.
10 See Cuozzo, 136 S. Ct. at 2146.
11 SeeMicrosoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015); Straight Path IP Group, Inc. v. Sipnet EU S.R.O., 806 F.3d 1356 (Fed. Cir. 2015); Cutsforth, 643 Fed. Appx. 1008 (Cutsforth I); PPC Broadband, Inc. v. Corning Optical Comms. RF, LLC, 815 F.3d 747 (Fed. Cir. 2016) (PPC Broadband I); PPC Broadband, Inc. v. Corning Optical Comms. RF, LLC, 815 F.3d 734 (Fed. Cir. 2016); Dell, Inc. v. Acceleron, LLC, 818 F.3d 1293 (Fed. Cir. 2016); SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir. 2016); Respironics, Inc. v. Zoll Medical Corp., 656 Fed. Appx. 531 (Fed. Cir. 2016); John D’Agostino v. MasterCard Int’l Inc., 844 F.3d 945 (Fed. Cir. 2016).
12 Proxyconn, 789 F.3d at 1299.
13 Id. at 1298.
14 Id.
15 Id.
16 Apple, Inc., et. al. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016).
17 Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015); In re: Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016); Arendi, 832 F.3d 1355.
18 Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016).
19 E.g. Proxyconn, 789 F.3d 1292; Straight Path, 806 F.3d 1356; PPC Broadband I, 815 F.3d 734; Dell, 818 F.3d 1293; SAS Institute, 825 F.3d 1341; D’Agostino, 844 F.3d 945.
20 Cutsforth, 643 Fed. Appx. 1008.
21 Id. at 1011-1012.
22 Id. at 1012.
23 E.g. Proxyconn, 789 F.3d 1292; Straight Path, 806 F.3d 1356; Cutsforth I, 643 Fed. Appx. 1008; PPC Broadband I, 815 F.3d 734; Dell, 818 F.3d 1293; SAS Institute, 825 F.3d 1341; D’Agostino, 844 F.3d 945.
24 Arendi, 832 F.3d at 1359.
25 Id. at 1366.
26 Id.
27 Magnum Oil, 829 F.3d at 1381, 1377-1378.
28 Id. at 1380.
29 Id. at 1379.
30 Id. at 1381.
31 In re Nuvasive, 841 F.3d 966 (Fed. Cir. 2016) (finding the Board improperly relied on an argument Petitioner made for the first time on reply, and where Patent Owner was denied leave to file motions to strike or, alternatively, surreplies, and denied substantive argument on the issue at oral hearing); Dell, 818 F.3d 1293 (holding the "Board denied [patent owner] of its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after [patent owner] could meaningfully respond"). But see Belden, 805 F.3d at 1081 (Fed. Cir. 2015) (seeing no basis to disturb the Board’s denial of a motion to exclude evidence presented in Petitioners’ reply where "Belden did not seek to file a surreply, to file additional observations on its cross-examination, to make arguments in those observations, or to have the Board waive any other regulations that it believed prevented it from adequately responding to Mr. Baxter’s declaration" stating that "[w]ith no Board denial of concrete, focused requests before us, we are not prepared to find that Belden was denied a meaningful opportunity to respond to the grounds of rejection").
32 Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015); Shaw Indus. Group, Inc. v. Automated Creel Sys., Inc. 817 F.3d 1293 (Fed. Cir. 2016); In re Warsaw, 832 F.3d 1327 (Fed. Cir. 2016); Husky Injection Molding Sys. Ltd. v. Athena Automation Ltd., 838 F.3d 1236 (Fed. Cir. 2016), Nuvasive, 842 F.3d 1376; Personal Web Techs., LLC V. Apple, Inc., No. 16-1174, 2017 WL 587132 (Fed. Cir. Feb. 14, 2017).
33 Personal Web, 2017 WL 587132 at *5.
34 Id. at *6.
35 Nuvasive, 842 F.3d at 1384.
36 Cutsforth, Inc. v. MotivePower, Inc., 636 Fed. Appx. 575 (Fed. Cir. 2016).
37 Personal Web, 2017 WL 587132 at *4.
38 In re Sang Su Lee, 277 F.3d 1338, 1346 (Fed. Cir. 2002).
39 Radio–Television News Directors Ass’n v. FCC, 184 F.3d 872 (D.C.Cir.1999).
40 Checkosky v. Securities & Exch. Comm’n, 23 F.3d 452, 464 (D.C.Cir.1994).
41 Sang Su Lee, 277 F.3d at 1346.
42 Id.
43 Ariosa, 805 F.3d at 1367 ("We do not direct the Board to take new evidence or, even, to accept new briefing. The Board may control its own proceedings, consistent with its governing statutes, regulations, and practice. 37 C.F.R. § 42.5(a). Those statutes, regulations, and practices embody expedition and efficiency-based policies that the Board must consider in determining the scope of the remand proceedings.").
44 Personal Web, 2017 WL 587132 at *6.
45 D’Agostino, 844 F.3d at 948.
46 Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026 and IPR2013-00109, Paper 80, p. 6 (P.T.A.B. Dec. 9, 2015).
47 See, e.g., id.; Ariosa Diagnostics v. Verinata Health, Inc., IPR2013-00276 (P.T.A.B.); Motivepower, Inc. v. Cutsforth, Inc., IPR2013-00274 (P.T.A.B.).
48 Adidas AG v. Nike, Inc., IPR2013-00067 (P.T.A.B.).
49 Id.
50 See, e.g., Proxyconn, IPR2012-00026 and IPR2013-00109, Paper 77, p. 2 (P.T.A.B. Sept. 1, 2015).; Ariosa Diagnostics, IPR2013-00276, Paper 49, p. 3 (P.T.A.B. Jan. 13, 2016); Motivepower, Inc. v. Cutsforth, Inc., IPR2013-00274, Ex. 2064, p. 5 (P.T.A.B. Mar. 29, 2016).
51 Adidas AG v. Nike, Inc., IPR2013-00067, Paper 62, p. 2 (P.T.A.B. Aug. 10, 2016).
52 See, e.g., Corning Gilbert v. PPC Broadband, Inc., IPR2013-00340, Paper 82, p. 2 (P.T.A.B. May 20, 2016).
53 Compare Proxyconn, Inc., IPR2012-00026 and IPR2013-00109 (P.T.A.B.) with Ariosa Diagnostics, IPR2013-00276 (P.T.A.B.).
54 Adidas AG v. Nike, Inc., IPR2013-00067 (P.T.A.B.).
55 Compare Proxyconn, IPR2012-00026 and IPR2013-00109 with Ariosa IPR2013-00276 (P.T.A.B.).
56 See, e.g., Proxyconn, IPR2012-00026 and IPR2013-00109, Paper 77, pp. 2-3 (P.T.A.B. Sept. 1, 2015).
57 See, e.g., Proxyconn, IPR2012-00026 and IPR2013-00109, Paper 77, p. 2 (P.T.A.B. Sept. 1, 2015); Ariosa, IPR2013-00276, Paper 49. 3 (P.T.A.B. Jan. 13,2016); Cutsforth, Inc., IPR2013-00274, Ex. 2064, p. 5 (P.T.A.B. Mar. 29, 2016).
58 Compare Corning Gilbert v. PPC Broadband, Inc., IPR2013-00340, Paper 82, p. 2 (P.T.A.B. May 20, 2016) (5 pages) with Proxyconn, IPR2012-00026 and IPR2013-00109, Paper 77, p. 3 (P.T.A.B. Sept. 1, 2015) (15 pages).
59 Adidas AG, IPR2013-00067 (P.T.A.B.); Corning Gilbert, IPR2013-00340 (P.T.A.B).
60 Cutsforth, IPR2013-00274, Paper 37, p. 3 (P.T.A.B. Mar. 31, 2016).
61 See, e.g., id.
62 See e.g., Ariosa, IPR2013-00276, Paper 49, pp. 3-4 (P.T.A.B. Jan. 13, 2016).
63 See e.g., id.
64 See e.g., id.
65 SAS Institute, Inc. v. Complementsoft, LLC, IPR2013-00226, Paper 55 (P.T.A.B. Jan. 18, 2017).
66 Nuvasive, Inc., v. Warsaw Orthopedic, Inc., IPR2013-00206, Paper 73 (P.T.A.B. Nov. 16, 2016).
67 Proxyconn, IPR2012-00026 and IPR2013-00109, Paper 80 (P.T.A.B. Dec. 9, 2015).
68 Ariosa, IPR2013-00276, Paper 64 (P.T.A.B. Aug. 15, 2016).
69 Sipnet EU S.R.O. v. Straight Path IP Group, Inc., IPR2013-00246, Paper 73 (P.T.A.B. May 23, 2016).
70 Respironics, Inc., V. Zoll Medical Corp. IPR2013-00322, Paper 54 (P.T.A.B. Dec. 29, 2016).
Originally printed in IP Litigator in March/April 2017. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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