By Scott A. McKeown
| February 5, 2016

Pilot Program Seeks to Convey AIA Trial Art & Arguments to Examiners

At yesterday's Patent Public Advisory Committee (PPAC) meeting, USPTO Assistant Deputy Commissioner for Patent Operations Jack Harvey explained a new pilot program to be launched in the spring of 2016.  The Pilot seeks to establish a "bridge between the Patent Trial & Appeal Board (PTAB) and patent examiners" examining patent applications relating to an ongoing AIA trial proceeding.

The goals of the program are to ensure that examiners are: (1) aware of the ongoing AIA trial proceedings and consider the records during examination; (2) study the results of these proceedings; and (3) adapt examination practices based on the PTAB feedback.  It was explained during the PPAC meeting that of the publication-based prior art submitted in AIA trial requests only 25% was found of record in co-pending patent applications, 50% for patent-based prior art.  Once the information is conveyed to the examiners (via an electronic dossier), it may be made of record as appropriate.

In addition to improving coordination between the PTAB and examiners of related cases, the pilot is designed to provide longer term goals such as adapting patent examination practices based PTAB feedback on such matters as claim construction. Also, feedback from petitioners as to the most commonly utilized art may focus examiner searching in niche areas.  The initial pilot will include 40-60 cases, the length of the Pilot is not yet known.   

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By Scott A. McKeown
| February 4, 2016

Patentee Burden Drives PTAB Obviousness Analysis

In Prolitec, Inc., v. Scentair Technologies, Inc.  the Court of Appeals for the Federal Circuit (CAFC) confirmed that patentees bear the burden of demonstrating patentability for amended claims in AIA trial proceedings before the USPTO Patent Trial & Appeal Board (PTAB).  Prolitec also found that this burden encompassed both the art of record in the AIA trial proceeding as well as the original patent prosecution history.

Earlier this week, in Illumina Cambridge LTD., v. Intelligent Bio-Systems, Inc., the Court explored the PTAB's analysis of amended claims relative to the burden of the patentee.  That is, whether or not the Board is required to do a traditional obvious analysis for amended claims, anew, or whether the existing record can be used as a backdrop by which the movant's burden can be assessed.

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By Scott A. McKeown
| February 1, 2016

Must IPRs Be Filed on a Weekend/Holiday to Meet the Requirements of 315(b)?


Petitioners seeking Inter Partes Review (IPR) must be mindful of the statutory bar of 35 U.S.C. § 315(b). This provision precludes IPR from being instituted for a patent in which the petitioner was served with a complaint of infringement more than one year prior to the petition filing. The rationale for the statutory bar of 315(b) is straightforward. That is, IPR was designed to be a true alternative to patent litigation, not an adjunct process that was typical of the inter partes patent reexamination proceeding it replaced. By mandating that an IPR filing be brought earlier in the litigation timeline, Congress hoped to avoid duplicative proceedings, avoid patentee harassment, and enhance the ability of the Patent Trial & Appeal Board (PTAB) to provide a timely resolution to such business disputes.

The time-limit language of 315(b) mandates denial of any petition filed "more than one year" after service of a complaint.  Nevertheless, the USPTO will routinely accept petitions filed more than one year after service of a complaint if the one year anniversary falls on a weekend or holiday. In such cases, the time to file is extended until the next USPTO business day. However, taking advantage of this weekend/holiday extension may prove risky in the electronic age.
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By Scott A. McKeown
| January 27, 2016

2016 Boardside Chats Include AIA Trial & Patent Reexam Appeal Topics

Starting next week, February 2nd, the USPTO's Patent Trial & Appeal Board (PTAB) will host its second year of "Boardside Chat" webinars. The purpose of the chats is to update the public on current Board activities and statistics as well as to regularly gather feedback; this is not a CLE event. The first webinar (noon to 1PM EST) will focus on the similarities and differences between appeals stemming from a patent reexamination and those from an ex parte, application appeals. (access the Boardside Chat webinar here)

For those seeking CLE credit on PTAB trial issues, on February 4th,
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By Scott A. McKeown
| January 26, 2016

PTAB Trial Basics To Be Reviewed By High Court

Earlier this month the Supreme Court granted certiorari in Cuozzo Speed v. Lee.  The Cuozzo appeal involves the very first Inter Partes Review (IPR) ever filed with the USPTO's Patent Trial & Appeal Board (PTAB). Throughout the IPR and CAFC appeals, patentee Cuozzo has maintained that the broadest reasonable claim interpretation (BRI) employed by the PTAB is improper, and that the PTAB's decision to institute trial should be reviewable on appeal. The Federal Circuit disagreed on both issues, but sitting en banc was sharply divided.

In its petition for certiorari Cuozzo presented two issues for review to the Supreme Court, now accepted:

1.     Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.
2.     Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

The grant of certiorari in many Federal Circuit cases has led to reversal.  As such, many are viewing the high court's interest in Cuozzo as an indication that the use of BRI in PTAB proceedings will be short-lived.  Unlikely.

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