By Scott A. McKeown
| May 19, 2015
Today's Federal Register Notice provides the long awaited "quick-fix" rule changes. The rules codify the changes announced on Director Lee's March 27th blog post, which provided for the use of a claim appendix in Motions to Amend, expanded page limits for such Motions, and expanded page limits for Petitioner Replies.

The final rules (here) provide additional ministerial changes to conform the rules to the Office's established practices in handling AIA proceedings, including:

• expanding petitioner replies to a motion to amend to 12 pages;
• requiring a 14 point, Times New Roman font to ensure readability of briefs;
• clarifying that more than one back-up counsel can be named;
• clarifying how to count dependent claim challenges to calculate filing fees;
• clarifying that providing a statement of material fact by a party is optional;
• clarifying that routine discovery contemplates only cross-examination of affidavit testimony prepared for the proceeding;
• providing that uncompelled direct testimony must be in the form of an affidavit, not a deposition;
• clarify that that motions in limine are not used in AIA practice;
• requiring that that objections to evidence should be made part of the record by filing them;
• clarifying that only a single request for rehearing may be filed as of right;
• clarifying, that consistent with the AIA, that CBMs may be extended in the case of joinder; and
• clarifying that CBM petitions may not be filed if the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the covered business method patent.

As stated previously, more substantive changes to the rules and Trial Practice Guide are expected in late 2015.
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By Scott A. McKeown
| May 14, 2015

Changes Clarify Expanded Panel Use & Single APJ Institution Decisions

As discussed on Monday, recent informative decisions explain the PTAB process for designating expanded panels for AIA trials. To apply the expressed rational of these decisions to the entirety of the Board, the Patent Trial & Appeal Board (PTAB) has revised its Standard Operating Procedure (SOP 1) accordingly. The revision addresses the assignment of Administrative Patent Judges to merits panels, interlocutory panels, and expanded panels in appeals, interferences, and AIA Reviews.  Among other things, the revision to SOP 1 clarifies that, although a party may not request an expanded panel, see AOL Inc. v. Coho Licensing LLC, Paper 12, No. IPR2014-00771 (March 24, 2015); Conopco, Inc. v. Procter & Gamble Co., Paper 24, No. IPR2014-00506 (December 10, 2014), a party is permitted to suggest the need for an expanded panel, see PTAB SOP 1 § III.C. (Rev. 14) (May 8, 2015). 

Another, perhaps more noteworthy change, is the ability of a single APJ to decide AIA trial institution. (footnote 1)  Going forward, a single APJ will institute trial, but any perceived prejudice from that single APJ would be avoided (theoretically) by the participation of two additional judges at the time of the final written decision. This change was mentioned in the Director's blog post some weeks back.

The Board has also released a revised organizational chart and associated explanation (here).
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By Scott A. McKeown
| May 13, 2015

CAFC Decides Patent Reissue was Improperly Broadened Based on Previous Markman Definition

Yesterday, in ArcelorMittal France v. AK Steel Corp. (CAFC 2015), the CAFC considered the impact of a reissue of U.S. Patent 6,296,805 on a previous appeal decision.  The '805 patent, directed to rolled steel, recited the claim limitation "very high mechanical resistance."  In an earlier infringement suit between the parties, the district court found this terminology to define "a tensile strength greater than 1500 MPa." This construction was upheld by the CAFC on appeal, and the case as remanded as to other issues.

During the appeal of the claim construction, Patentee reissued the '805 patent as reissue patent RE44,153.  The reissue patent included a new claim, claim 23, that recited "mechanical resistance in excess of 1000MPa."  The originally construed claims remained in the reissue patent. Once back in the district court, Patentee amended its complaint to include claim 23 of the new reissue patent.  Thereafter, on summary judgement, the district court ruled the reissue patent invalid for improper broadening. In the second appeal, decided yesterday, the CAFC agreed that claim 23 of the '153 reissue was improperly broadened.  

Ostensibly, the USPTO did not consider 1000MPa limitation as broadening relative to the specification of the '805 patent.  On the other hand, the CAFC found  "greater than 1000MPa" to be broadening based upon the district court's previous construction that the scope of "very high mechanical resistance" was greater than 1500MPa. This difference in construction highlights the potential incongruity between USPTO and district court claim construction practices.

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By Scott A. McKeown
| May 11, 2015

Board Updates Public on Manner of Designating Expanded Panel

As the Patent Trial & Appeal Board (PTAB) is now issuing an increasing number of Final Written Decisions (FWD) in addition to Institution Decisions, it is, not surprisingly, experiencing an increasing number of Requests for Rehearing. Many such Requests are seeking expanded panel review.  To date, the Board has issued expanded panel decisions in a small handful of cases directed to fundamental questions of law and AIA trial practice. For example, expanded panels were used in Target Corp. v. Destination Maternity Corp., (IPR2014-00508), which was expanded twice to explore issue joinder authority of 35 U.S.C. §315(c), and Apple Inc., v. Rensselaer Polytechnic Instit., LLC., Case (IPR2014-00319) to explore 35 U.S.C. §315(b). Since these decisions, parties seeking rehearing have been asking for the same expanded panel treatment.

Last Friday the PTAB issued two informative decisions, which make clear that designation of an expanded panel is not by party request, but rather, and internal decision of the Board.

The intent of these informative decisions is clearly to eliminate such requests going forward.  However, it seems likely that such requests, or "suggestions"  will likely persist in one form or another.

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By Scott A. McKeown
| May 4, 2015

Senate Bill Jumps to Forefront of Patent Reform Debate

Introduced just last week, the Patent Act of 2015 (S.1137) will be considered by the full Senate Judiciary Committee this Thursday.  The hearing, entitled Finding Effective Solutions to Address Abusive Patent Practices, will be the starting point for possible amendments.  That said, it seem unlikely that the Bill will be altered in any material respect given the significant compromises embodied by the current draft. Competing Senate efforts, such as the Strong Act, will now fall by the way side as consensus grows around this more measured effort.
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