Posts Tagged: "abuse of discretion"

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled today in a precedential opinion that Alarm.com, which was denied institution on three inter partes review (IPR) petitions it filed against patents owned by Vivint, Inc., could not simply “repackage” arguments raised in its IPR petition to challenge the same patent via ex parte reexamination. The opinion was authored by Chief Judge Moore. In so ruling, the CAFC said that it was “arbitrary and capricious” and an abuse of discretion for the U.S. Patent and Trademark Office (USPTO) to grant the reexamination request after it had denied the IPRs under 35 U.S.C. § 325(d).

Under Patent Office regulations, a party seeking to submit supplemental information more than one month after the date an IPR is instituted must request authorization to file a motion to submit the information. 37 C.F.R. § 42.123(b). The request to submit new information must show: (1) why the supplemental information reasonably could not have been obtained earlier, and (2) that consideration of the supplemental information would be in the interests of justice. Id. The Court found that Ultratec’s motion to admit the expert’s trial testimony satisfied both requirements… Belated evidence in an IPR may be admitted when the evidence was not available sooner and would serve justice to be considered. It is an abuse of discretion for the Board to reject such evidence without a reasonable basis and without explanation.

Earlier today, in a unanimous decision delivered by Chief Justice John Roberts in Halo Electronics, Inc. v. Pulse Electronics, Inc., the United States Supreme Court did what much of the patent world expected it would do, which is overrule the Federal Circuit’s “unduly rigid” test for the awarding of enhanced damages for willful damages put in place by In re Seagate Technology, LLC, 497 F. 3d 1360, 1371 (2007)(en banc).