Patents Post Grant Blog

Reach of Estoppel More of a Concern After AIA

The application of statutory estoppel to patent challengers was a concept first introduced in 1999 with the advent of inter partes patent reexamination (IPX). Initially, many sensationalized the estoppel effect of IPX together with the unpredictability of the reexamination process as justification to avoid use of the new proceeding. Over the years, due to the consistent performance of the USPTO’s Central Reexamination Unit (CRU), and perhaps to a greater extent, the 5-7 year duration of a fully contested IPX, patent challengers realized the estoppel risk to be an insignificant factor for most patent disputes (since most conclude before estoppel can attach). For this reason, the estoppel mechanics as to real-parties-in-interest and privies were infrequently considered by the courts, or USPTO.

Going forward, estoppel may once again become a concern for patent challengers under the new proceedings of the America Invents Act (AIA).

Inter Partes Review (IPR), Post Grant Review (PGR), and the Transitional Program for Covered Business Method Patents (TPCBMP), all have their own estoppel provisions. In view of the fact that all of these proceedings are designed to end within 12 months, estoppel is now a more clear and present danger. As such, it is now more important than ever for patent challengers to understand the meaning of ”real party-in-interest” and “privies.” Read the rest of this entry »

Transitional Program for Covered Business Method Patents (TPCBMP)

The Transitional Program for Covered Business Method Patents, (TPCBMP) will be implemented by the USPTO on September 16, 2012. The new post grant option essentially provides that any “covered business method patent” may be challenged under the same procedures and standards applied in Post Grant Review (PGR) proceedings. The TPCBMP will sunset 8 years from implementation, hence the “transitional” label.

The major differences between PGR and TPCBMP relate to patent eligibility and estoppel.

With respect to estoppel, PGR estoppel attaches to any ground that the petitioner raised, or reasonably could have raised during the PGR. On the other hand, TPCBMP estoppel is only limited to issues actually raised during the proceeding.

The legislation defines a “covered business method patent” in general terms, as follows:

a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

As can be appreciated, the definition of “covered business method patent” is of great interest to some of the leading U.S. innovators. Recently, the Senator (Schumer D-NY) that introduced the TPCBMP to the patent reform legislation urged the USPTO to adopt a very liberal definition of “covered business method patent.” Read the rest of this entry »

Numerous Comments Received in Response to Rule Making Effort

With the window for submitting comments on the USPTO post  grant rule sets now closed, the agency has published the complete public comment set.

With respect to the post grant rule sets, a total of 251 comments were received. Data from the USPTO America Invents Act (AIA) micosite break down the submissions as follows:

Not surprisingly, the vast majority of comments appear directed to:

1. Page Limits (and here)
2. Fee Structure
3. Patentee Estoppel
4. Supplemental Information

Final Rules are expected to issue in the August time frame (setting an internal deadline of August 16, 2012). The Office has also publicly stated that comments may be solicited in the Fall on possible further refinements.

Major Bar Organizations Comment on USPTO Proposals

The public comment period for the “umbrella rule set” proposed by the USPTO to implement the patent trial proceedings of the America Invents Act (AIA) closed this past Monday (April 9th). Under the AIA, the Patent Trial & Appeal Board will conduct validity trials beginning September 16, 2012. The trials may be conducted as part of an Inter Partes Review (IPR) proceeding, or Transitional Program For Covered Business Method Patents (TPCBMP). Pure Post Grant Review (PGR) challenges, which are only available for patents issuing from applications filed on or after March 16, 2013, will occur once these applications begin to issue as patents some years thereafter. Comments on the specific rule packages (IPR, PGR, TPCBMP) were due to the office on Tuesday (April 10th).

As with the initial request for comments on implementation, the AIPLA and IPO have joined forces with the ABA to submit a single comment.

ABA/AIPLA/IPO comments (here)

One of the more interesting positions of the joint comments question Read the rest of this entry »

Commentary on Notice of Proposed Rules to Implement Post Grant Patent Proceedings Due on Monday

The deadlines for submitting comments to the USPTO on the Group 2 rule making proposals (i.e., post grant patent proceedings) are next Monday and Tuesday, April 9-10th. (depending upon the publication date)

While the USPTO should be applauded for their monumental, and comprehensive proposals (most of which are quite good and well thought out), some issues are still to be refined. The most problematic issues presented by the proposed rules, at least in my opinion, are as follows:

1. Page Limits (and here)
2. Fee Structure
3. Patentee Estoppel
4. Supplemental Information

Speedy, One Sided Estoppel to Force Judicial Deference

The estoppel provisions of Post Grant Review (PGR) and Inter Partes Review (IPR) are markedly different than those in existence today for Inter Partes Reexamination (IPX). Most importantly, PGR/IPR estoppel attaches upon a written determination of the PTAB, and a final, non-appealable decision of a court will not force the USPTO to vacate a parallel IPR/PGR proceeding. These estoppel features are expected to be a significant driver going forward in motions to stay parallel infringement actions.

Currently, IPX requires all appeals to be exhausted before estoppel can attach. In practice, this means that there is (roughly speaking) a 6 year journey through the Central Reexamination Unit (CRU), Board of Patent Appeals & Interferences (BPAI) and Court of Appeals for the Federal Circuit (CAFC). Starting September 16 2012, IPX will be replaced with IPR. Estoppel in an IPR proceeding will be effective within 12-18 months from the initiation of the proceeding. This is because IPR/PGR proceedings must be concluded in this time frame by statutory mandate.

The speed of IPR/PGR proceedings relative to court proceedings will certainly undermine plaintiff oppositions to a motion to stay. Often times, the strongest plaintiff argument in opposing a stay is that the significant USPTO delay will be prejudicial to the plaintiff.  However, perhaps more compelling will be the shifting of the prejudice argument to the side of the defendant. Read the rest of this entry »

Romney, Gingrich and Santorum Named as Defendants in Patent Suit

This past Monday, EveryMD filed suit against the Republican presidential candidates for…well..using Facebook. The suit, captioned EveryMD v. Rick Santorum, Mitt Romney, and Newt Gingrich(C.D.CA) explains that U.S. Patent 7,644,122 is infringed by Facebook, and as business customers of Facebook receiving messages, that there is some type of liability on the part of the candidates. (complaint here)

The only independent claim of the ‘122 Patent recites:

A method for providing individual online presences for a each of a plurality of members of a group of members by an interface server computer comprising the steps of:

maintaining a database comprising information associated with each of said plurality of members at a database system connected to said interface server computer;

allotting individual URLS to each of said plurality of members by associating an individual URL with each individual member of said plurality of members in said database system;

associating an individual home page for each said individual member of said plurality of members with said individual URL allotted to said individual member in said database system, said individual home page comprising information from said database associated with said individual member; a first control for submitting a comment about said individual member; and a second control separate from said first control for sending a message other than said comment to said individual member;

receiving by said interface server an online request for said individual URL from a requesting source;

providing said individual home page by said interface server computer to said requesting source.

It seems likely that Facebook (in theory anyway) is the only direct infringer of the claim, curiously, no indirect infringement theory is pled relative to the defendants named in the complaint. Thus, the complaint is almost certainly to be dismissed.

It is also worth noting that Facebook sought reexamination of the ‘122 Patent, in 2010. Currently, all claims currently stand rejected at the USPTO. Oral argument at the Board of Patent Appeals & Interferences (BPAI) will likely occur in the next few months. (95/001,411). Thus, even if the case were to somehow go forward, it would almost certainly be stayed due to the late stage of the reexamination. So, aside from costing the candidates some nominal legal fees, this filing seems to be more of a public relations exercise.

Perhaps a more interesting (although academic) question is whether the ‘122 Patent, entitled “Method, Apparatus and Business System. . .” claims enough of a “technological invention” to avoid Post Grant Review eligibility under the new Transitional Program for Covered Business Method Patents.

Post Grant Timeline Released by USPTO

While the USPTO will publish the last of the Post Grant related rule packages today, the Federal Register notices yesterday provided the rules of practice before of the new Patent Trial & Appeal Board (PTAB).

Practice Guide For Proposed Trial Rules (here)

Rules of Practice for Trials Before the Patent Trial & Appeal Board and Judicial Review of Patent Trail and Appeal Board Decisions (here)

The USPTO provided the graphical illustration of the IPR/PGR timeline reproduced below:

As illustrated in the timeline, a maximum of 12 months is allocated for an IPR/PGR proceeding. Of course, the 12 month timeline may be extended 6 months if the USPTO can show cause. Oddly, the Patent Owner is expected to submit amendments prior to the close of discovery. So, for example, if the Patent Owner is seeking discovery as to secondary indicia of non-obviousness to avoid amendment, by the time that evidence is secured (or not) the opportunity to amend the claims may be lost as a matter of right.

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