EDTX Judge Davis Announces New, Faster “Track B” for Patent Cases
Last week, Chief Judge Leonard Davis of the Eastern District of Texas (EDTX) issued an Order (here) creating a second, Track B for patent cases. Track B as the name implies establishes a different, accelerated track as compared to the typical EDTX schedule (Track A). Litigants may opt for Track B by agreement, or be selected for such by the court. Track B is designed to reduce costs by accelerating milestones and limiting certain filing and discovery practices. These same concepts are expressed in many of the proposals of the pending patent reform legislation. The judiciary has been rather vocal on opposing the various proposals floating around Congress on issues of district court case management. While the goal of Track B is to resolve disputes sooner with less cost to litigants, the timing also suggests a deliberate amplification of the judiciary’s position.
To be sure, the proactive efforts of the judiciary to reduce time and expense of litigation are greatly welcomed, and the EDTX effort is to be applauded for taking the lead. Yet, based upon the dynamics of what is going on in the world of patent assertion post America Invents Act (AIA), the EDTX Track B docket could aid certain non-practicing entities that were only recently left for dead. Read the rest of this entry »
Board to Host Overview of Operations
Wednesday, February 26th, the USPTO will host a program entitled “State of the PTAB” at their new Silicon Valley location. The program will cover an overview of the PTAB, Board growth — past and planned, day in the life of a judge, and training for new judges. While primarily a recruiting event for new judges, the program is sure to provide some interesting insight (flyer here)
The event will be webcast 6-8PM (PST) http://www.uspto.gov/ip/boards/bpai/index.jsp
New Executive Actions Largely Political Props
With little progress being made in Washington DC these days on hot button issues such as immigration, health care, or debt control, the White House is once again going back to the patent reform well. The latest round of political theater occurred last Thursday when the White House announced yet another round of ”executive actions.” Like the earlier round, these also recycle ongoing PTO programs and initiatives as ”new ideas” of the administration.
The latest initiatives include providing a web page of resources for those facing patent troll suits, a program to encourage the USPTO to “crowdsource” for prior art, and additional seminars for patent examiners to keep them up to date on changes in technology and functional claiming. Of course, the PTO has been cooperating with industry on technology seminars for years, and the peer-to-patent program was introduced in 2007 to leverage crowdsourcing.
As an aside, the PTO now has a page of PTAB decisions on functional claiming, which I find useful.
Patentees Fail to Adjust to Motion Practice
As final written decisions in Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings begin to issue from the USPTO’s Patent Trial & Appeal Board (PTAB), it is clear that patentees have yet to master the process of amending their patents in these new proceedings. The primary disconnect appears to be the failure of patentees to recognize that an amendment in a PTAB proceeding is proposed by motion; an amendment is not entered as a matter of right.
Unless prosecution has been closed in the examination of a patent application or patent reexamination, a patent applicant/patentee is free to present virtually any number and character of claim amendments supported by their specification. Outside of the prohibition against broadening, or amendments relating to a patentably distinct inventions, a patent applicant/patentee is not required to do much else but present their new claims for examination. On the other hand, a motion to amend before the PTAB requires the movant (i.e., patentee) to demonstrate entitlement to the requested relief. This demonstration requires more than most patentees are accustomed to providing the USPTO. Read the rest of this entry »
The Applicability of Prosecution History in a BRI Analysis
Whether in a new patent application or in an issued patent being subject to a post grant review proceeding, the USPTO utilizes a Broadest Reasonable Interpretation (BRI) standard for all patent claims. Under this one-size-fits-all standard a patent claim is construed consistent with the accompanying patent specification from the perspective of one skilled in the relevant art.
Although applied in post grant proceedings, BRI was developed as an examination expedient for patent examiners to protect the public notice function of newly minted patent claims. That is, since no property rights exist at the time of patent application, a pure BRI analysis properly ignores the developing intrinsic record as a guide to claim meaning (i.e., prosecution history) in favor of claim amendment practices. However, once an issued patent returns to the USPTO for a post grant analysis, consideration of prosecution history as intrinsic evidence is more of a mixed bag—especially when before examiners steeped in traditional BRI practices (e.g., reexamination, reissue, supplemental examination).
Recently, the Court of Appeals for the Federal Circuit (CAFC) has sent the USPTO Patent Trial & Appeal Board (PTAB) seemingly conflicting messages on the use of prosecution history during post grant proceedings.
Read the rest of this entry »
Hearings End, Leahy Bill to Reemerge on Fast Track
Last Friday, the Senate Judiciary Committee concluded a round of additional staff hearings on pending Senate Bills S.1720 (Leahy) entitled Patent Transparency & Improvement Act. The hearings focused on the concerns of universities, small inventors, and restauranteurs/retailers with the currently proposed legislation. At the same time, the Committee considered refinements to the Bill, including the value in adopting one or more of the concepts expressed in related Senate Bills 1612 (Hatch), 1013 (Cornyn) and 866 (Schumer).
At the forefront of these deliberations is the concern to balance “unintended consequences” with the goal of eliminating frivolous patent suits, especially those targeting downstream users of off-the-shelf products. With the legislative effort completed in the House by the passage of the Goodlatte Bill, and the Senate coming down the home stretch with their companion bill, president Obama took the bold step of calling on Congress to reform patent law in his recent State of the Union address….you see where this is going.
Upcoming Post Grant CLE
For attorneys seeking post grant patent CLE over the next few months, there are a number of high quality programs scheduled between February and April.
Next Wednesday, February 12th, the Practicing Law Institute presents the one hour briefing entitled: PTAB Roadblock to Patent Monetization. The program will explore the impact of PTAB patent challenges on the patent assertion landscape.
Thursday February 13th, week, Strafford legal presents Proactive Patent Procurement & Prosecution Strategies: Minimizing the Threat of Post Grant Challenges. This one hour webinar will cover the impact of PTAB patent challenges on patent portfolio development strategies.
February 19th-20th, the International Intellectual Property Institute (IIPI) will conduct a two day seminar in Arlington, VA entitled AIA Post-Grant Practice Conference. This two day program is directed entirely to post grant practice, the second day including mock hearings an oral arguments.
In March the return of the highly acclaimed Practicing Law Institute program entitled USPTO Post-Grant Patent Trials 2014. This program, dedicated entirely to post grant practice will be held on March 27, 2014 in New York, and again on April 28, 2014 in San Francisco. A live webcast is available for the San Francisco location.
Heading into April, Post-Grant Patent Practice: Review and Reexamination is offered March 30-April 1 in Bonita Springs, Florida
Post-Grant Patent Practice: Reissue, Owner-Request Reexamination, and Supplemental Examination is offered the next day, April 2, in Bonita Springs, Florida.
On April 3rd, the American Bar Association (ABL) Spring Meeting in Arlington Virginia will host Game Over: The Game Changing Impact of the Patent Trial & Appeal Board on Non-Practicing Entities (NPEs).
I hope you can join me and my colleagues at one of these upcoming events.
IPO Chat Channel Webinar this Thursday
Just a reminder that this Thursday the IPO Chat Channel will host a webinar entitled: Appeals from the PTAB: Laying the Groundwork for the Federal Circuit. Please join me and my co-panelists Hon. Arthur Gajarsa, Wilmer Cutler Pickering Hale and Dorr, LLP and Mollybeth Kocialski, of Oracle Corporation for a discussion of this important practice development.
Evidence of Petitioner Control Critical for PTAB Privity Finding
Under 35 U.S.C. § 315(b) a petitioner, real party-in-interest, or privy of the petitioner must seek Inter Partes Review (IPR) within 12 months of service of a complaint for patent infringement. In an attempt to dodge some IPR filings as time barred, patentees are urging the USPTO Patent Trial & Appeal Board (PTAB) to adopt an expansive interpretation of privy. That is, since parties are often time embroiled in patent suits at different times, expanding the 12 month window to encompass the first filed suit could insulate many patentees from dreaded IPR challenges.
As detailed previously, in Atlanta Gas Light Company v. Bennett Regulator Guards Inc., (IPR2013-00453, Paper 31, January 22, 2014), the PTAB agreed that the existence of an indemnification agreement was probative of the opportunity for control by a supplier of a customer petitioner. However, the PTAB is seeking more than the mere existence of an agreement, but instead, hard evidence of control. Read the rest of this entry »
PTAB Rejects Early Motions to Exclude as Improper
The Patent Trial & Appeal Board (PTAB) has begun issuing a steady stream of final written decisions in Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings. In these initial decisions, the Board is denying a significant number of improperly filed motions to exclude from both petitioners and patentees alike. Specifically, the Board is urging that a proper motion to exclude is not filed to: (1) challenge the sufficiency of the opposing parties evidence; (2) serve as a sur-reply; or (3) attack evidence raised in petitioner filings as being “new.” Instead, a proper motion to exclude must be keyed to an earlier made evidentiary objection.
While the PTAB is diligently educating the public on the proper motion practice in the initial wave of decisions, failure to heed the guidance in these initial decisions may result in attorney sanctions down the line. Read the rest of this entry »