Tweaks to Strict Motion Guidelines Are in Order
Since the passage of the America Invents Act (AIA) the Patent Trial & Appeal Board (PTAB) has successfully fulfilled it’s charge as a speedy, cost effective alternative to patent litigation. The PTAB has been so effective in cancelling patent claims, based on the limited, preliminary results, that the Board is being criticized as anti-patent. As discussed earlier this week, this criticism is unfounded as the USPTO will always be a significantly more patent challenger friendly forum relative to the district court. Still, there is another aspect of the early statistics that patentees find of equal concern, the perceived impossibility of successfully amending the claims of a patent during a PTAB challenge.
To date, the PTAB has not granted a single motion to amend.
The PTAB properly points out that that there is a very small sample of cases in which amendment has even been attempted, and a successful motion is expected to be issued shortly. Yet, the current statistical situation (as transient as it may be), coupled with the fact that the strict motion to amend guidelines have always been viewed unfavorably, is resulting in a bit of a black eye. This at a time when maintaining the BRI standard in PTAB proceedings is being justified based upon the ability to amend.
To the Board’s credit, the current round table initiative is designed to receive feedback for the purpose of revising some rules of practice. To this end, below are some changes that I believe would improve patentee prospects for amendment while maintaining the PTAB’s mission to expeditiously decide these important, but complex issues of patentability. Read the rest of this entry »
Critics Ignore Long Standing Realities
Critics of the Patent Trial & Appeal Board (PTAB) are out in force decrying the work of the PTAB as anti-patent. This criticism flows from the unfavorable outcomes of the 30 or so concluded Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings to date. That is, some consider the heavy number of claim cancellation decisions as evidence of a bias against patentees. Nothing could be further from the truth.
First, patents now being asserted were drafted to survive district court scrutiny. As is well known, when in court, patentees benefit from a clear and convincing evidentiary standard, a presumption of patent validity, and a non-technical audience. Due to the significant obstacles of demonstrating invalidity before a court, infringement concerns have been the primary driver of patent procurement practices to date. For this reason patents are routinely procured to obtain the broadest possible claim scope for the purpose of ensnaring infringers; often times overly broad.
On the other hand, the PTAB counteracts each Read the rest of this entry »
Longest Running PTAB Only CLE Stops in San Francisco Next Monday
A day before the the PTAB round table event comes to Santa Clara on 4/29, the popular Practicing Law Institute program USPTO Post-Grant Patent Trials 2014 makes its yearly stop in San Francisco. This day long program, dedicated entirely to post grant patent practice was last held on March 27, 2014 in New York City where it set attendance records. This is the last stop of the year for this acclaimed program and faculty, a live webcast is also available.
The day-long schedule includes:
-The First Eighteen Months of Post-Grant Patent Challenges at the Patent Trial and Appeal Board (PTAB)
-The PTAB Petition, Pre-Trial Phase, and Trial Institution
-PTAB Trial Conclusion - The Oral Hearing, Final Written Decision, Rehearing and Appeals to the CAFC
-Covered Business Method (CBM) Challenges and Post-Grant Review (PGR)
-Optimal Strategy and Tactics in the Post-Grant Trial World, Including Parallel Litigation Proceedings
Copies of the best selling PLI treatise entitled Post-Grant Proceedings Before the Patent Trial and Appeal Board (Second Edition) are available (here). I hope to see you there.
Webcast today, 1-4PM EST
As a reminder, the Patent Trial & Appeal Board (PTAB) roundtable series kicks off today in Alexandria.
The Chief Judge will kick off today’s program with some performance information, including entirely new statistical categories of data. Thereafter, judges of the PTAB will conduct mock telephone conferences, and I along with three other practitioners will close out the program discussing strategy, practice tips and concurrent proceeding concerns.
Alexandria, VA Webcast – April 15, 2014
Roundtable Discussions to Spur Dialogue on Possible Rule Changes
Roughly eighteen months have passed since the USPTO’s implementation of the new post grant patent challenges of the America Invents Act (AIA). Since the rules for implementing these post grant patent proceedings were developed under an aggressive time schedule, as promised, the USPTO is now revisiting those rules. In the months ahead, the USPTO will be considering whether revisions/refinements to the Patent Trial & Appeal Board’s (PTAB) rules are in order. To kickoff the effort, the PTAB will be conducting informational/roundtable discussions around the country. Once the roadshows are concluded, the USPTO is planning a Federal Register Notice this summer to collect additional stakeholder comments.
The roadshow agenda includes a discussion of AIA trial statistics, lessons learned, and techniques for successful motions practice. The roundtables are free and open to all with seating available on a first-come, first-served basis. Stops include, Alexandria (webcast available), New York, Chicago, Detroit, Santa Clara, Seattle, Dallas, and Denver.
Schedule and agenda are posted below. Read the rest of this entry »
Stringent PTAB Amendment Process to Drive Patent Reissue Filings
As discussed previously, patent owners continue to struggle with the motion-based amendment requirements of the USPTO’s Patent Trial & Appeal Board (PTAB). In recent months, patentees subject to Inter Partes Review (IPR) and Covered Business Method (CBM) challenges have begun exploring alternative USPTO avenues for presenting amendments. In particular, patentees are following the advice of the PTAB and initiating patent reissue and reexamination proceedings.
Patentees generally find patent reexamination more attractive than patent reissue. This is due to the special dispatch accorded a patent reexamination, the relatively narrow scope of prior art review, and insulation from 112 and 101 issues. However, as made clear recently, patent reissue may be the only escape for patentees struggling at the PTAB.
Read the rest of this entry »
Supreme Court Considers Patentable Subject Matter Eligibility…Again
The closely watched case of Alice Corp. v. CLS Bank was argued before the Supreme Court of the United States this past Monday. The Court is not expected to radically depart from their significant precedent on patentable subject matter. Yet, the decision will be especially relevant to Covered Business Method (CBM) challenge proceedings before the USPTO’s Patent Trial & Appeal Board (PTAB). Below are some thoughts on the oral argument from my partner Michael Kiklis. Mike has recently authored the treatise entitled The Supreme Court on Patent Law. Read the rest of this entry »
Roundtables Kick Off in Alexandria on 4/15
In the weeks ahead, the USPTO’s Patent Trial & Appeal Board (PTAB) will present roundtable programs across the country to share information and collect feedback on the new patentability trials of the America Invents Act (AIA). The first stop will be at the USPTO headquarters in Alexandria Virginia on 4/15 (agenda here).
The program will include an update on recent trial statistics, mock teleconferences, and plenary sessions with Administrative Patent Judges (APJs). Additional roundtable locations include, New York City, Chicago, Detroit, Silicon Valley, Seattle, Dallas and Denver.
IPR…Not Just For Trolls
With Congress on the verge of passing still more legislation directed at alleviating the dreaded “patent troll” problem, perhaps Congress should pause to consider what has already been accomplished over the last 18+ months. As pointed at by Gene Quinn at IPwatchdog last week, Congress is in a rush to pass further patent reform legislation in the name of “helping Main Street America.” Yet, since September 16, 2012 the America Invents Act (AIA) has been wildly successful in providing a cheaper, faster, low cost alternative to patent litigation. Inter Partes Review (IPR) in particular has become the favorite anti-troll measure.
Typically, an IPR is pursued against the subject patent so that a stay of the costlier litigation can be obtained. Depending upon the jurisdiction/judge involved, the ability to stay a litigation pending USPTO review has increased significantly since the passage of the AIA. While this change in landscape is welcome news for those battling trolls, IPR is equally concerning for those patentees considered to be true technology innovators. Read the rest of this entry »
PTAB Breaks 1000 Threshold for CBM and IPR Filings
Last week, the USPTO issued the official tallies/progress statistics for Inter Partes Review (IPR), Post Grant Review (PGR) and the Covered Business Method (CBM) proceedings. As of March 6, 2014 the Patent Trial & Appeal Board (PTAB) has received 924 IPR petitions and 127 CBM petitions, 1056 petitions in total. Since the last update in January, the PTAB has seen 150 additional petition filings. These numbers are well beyond the 281 filing limit per year Congress envisioned in the America Invents Act. The PTAB is seeing 281 filings roughly every 2-3 months. (Click to Enlarge)
Not surprisingly, the vast majority of IPR petitions remain in the predictable arts, significant concentrations being in consumer electronics and mobile communication technologies. (a favorite haunt of non-practicing entities (NPEs))
Although difficult to gauge from the numbers due to the lag in filing of preliminary responses across yearly boundaries and larger sample in 2014 filing numbers, it seems that patent owner’s are beginning to appreciate the limited value of preliminary responses. The number of waived responses in 2014 has already surpassed 2013 numbers.
Based upon the growing sample, the settlement/adverse judgment rate appears to be leveling out at around 15-20%. As more proceedings mature toward written decision the rate may increase. Of course, it is within the discretion of the PTAB to continue to written decision for late stage settlements, especially those attempted after the patent owner response. (See CBM2012-00007)