This is Mark Thomas's Typepad Profile.
Join Typepad and start following Mark Thomas's activity
Join Now!
Already a member? Sign In
Mark Thomas
Recent Activity
In April and May of 2014, the USPTO conducted a nationwide “listening tour” seeking public feedback regarding trial proceedings under the America Invents Act. On May 19, 2015, in response to that feedback, the USPTO published a package of amendments to the rules of practice in post-grant proceedings, which include... Continue reading
Posted May 26, 2015 at Post Grant AdvocATor
A district court judge recently denied a motion to strike portions of an accused infringer’s invalidity contentions that relied in part on publications that the accused infringer had not raised in connection with an IPR petition. Star Envirotech accused Redline Detection of infringing Star’s patent number 6,526,808, which claims methods... Continue reading
Posted Feb 4, 2015 at Post Grant AdvocATor
On June 5, non-practicing entity eCharge Licensing, LLC filed a declaratory judgment suit against the USPTO (and director Michelle Lee) in the Eastern District of Virginia, seeking a declaration of unconstitutionality of the sections of the America Invents Act providing for inter partes review. On the same day, eCharge also... Continue reading
Posted Jul 30, 2014 at Post Grant AdvocATor
Matter: K-40 Electronics, LLC v. Escort, Inc., IPR2013-00203 The PTAB on May 30 granted in part petitioner K-40’s request for rehearing on the issue of live testimony from Mr. Orr, the named inventor on the patent at issue. The Board had previously granted patent owner Escort’s motion requesting live testimony from the inventor at oral argument. In its initial decision on Escort’s motion for live testimony, the Board explained that such testimony would only be permitted in limited circumstances. The Board observed that Mr. Orr would be testifying as a fact witness, not an expert, and that his testimony on the issue of whether his invention antedated the asserted prior art would likely be dispositive. The Board emphasized the importance, under these circumstances, of its ability to assess the demeanor of the witness. The Board initially ordered that Mr. Orr’s previously-submitted declaration would serve as his direct examination, and that petitioner K-40 would be permitted 30 minutes of cross-examination, followed by 30 minutes of re-direct from Escort. In its request for rehearing under 37 CFR 42.71(d), K-40 argued that the Board had overlooked the existence of 7 hours of video recorded deposition testimony from Mr. Orr, which K-40 asserted would sufficiently permit the Board to assess Mr. Orr’s demeanor. K-40 also asserted that it had no further questions for Mr. Orr. Finally, K-40 explained that it was unsure whether the Board was ordering it to conduct cross-examination at oral argument. In its decision on K-40’s request for rehearing, the Board denied that it had overlooked the availability of video of Mr. Orr’s deposition, citing previous acknowledgement of the video in prior conferences. As for K-40’s assertion that it had no further questions, the Board noted that this assertion had not been made in prior briefing. However, the Board adjusted the prescribed procedure to begin with direct examination from Escort, to which K-40 was permitted to respond in cross-examination if it so chose. If K-40 elected not to conduct live cross-examination, it would be permitted to submit portions of the video record of the deposition. Finally, the Board’s order provided that re-direct by Escort may be permitted at the Board’s discretion. K-40’s representation that it had no further questions for Mr. Orr on cross-examination may have been a strategic maneuver intended to forestall live re-direct from Escort, mooting the necessity for live testimony. If so, the strategy appears to have backfired, as the Board adjusted the prescribed procedure to open with live direct examination by Escort. Moreover, Escort may also be allowed to conduct re-direct examination if the Board permits it. The Board’s initial decision provides guidance on when the Board is likely to permit live testimony at oral argument, i.e., when the testimony of a fact witness may be dispositive, and the Board will benefit from the opportunity to observe the witness’s demeanor during examination. The Board’s decision on the motion for rehearing serves as a point of caution, demonstrating that a party should take into account that the Board may respond to its arguments by modifying an existing order in a manner not foreseen—or preferred—by the movant. Continue reading
Posted Jun 9, 2014 at Post Grant AdvocATor
A panel of the Federal Circuit on Wednesday dismissed an appeal from a Patent Trial and Appeal Board decision, finding that the appellant, a public interest group, had failed to allege facts sufficient to demonstrate that it had suffered an injury in fact necessary to confer Article III standing. Continue reading
Posted Jun 8, 2014 at Post Grant AdvocATor
Mark Thomas is now following The Typepad Team
Jun 8, 2014