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 »
USPTO Proposes Attributable Owner Requirements
Last week, the USPTO released a Notice of Proposed Rulemaking (NPRM) entitled Changes to Require Identification of Attributable Owner. The proposals would heap significant new administrative requirements on patent owners in the name of thwarting abusive patent suits. The agency explains the new reporting requirements will, in part, reduce risk of abusive patent litigation by helping the public defend itself against such abusive assertions by providing more information about all the parties that have an interest in patents or patent applications.
The proposal is unlikely to cause any kind of meaningful relief for companies targeted by patent trolls. Unfortunately, this effort is being driven from the White House. The PTO is fully expecting the firestorm that is coming to push back on this misguided mandate….unleash the fury.
Indemnification Obligation May Trigger IPR Clock
Indemnification from a claim of patent infringement is a common warranty in contractual agreements for the exchange of technological goods. In the event of an infringement claim against the contracted goods/services, a demand for indemnity triggers a duty of the supplier to defend against the claim in some manner, typically funding the defense, or taking over responsibility for the defense effort. As I discussed previously, indemnification clauses require special attention after the America Invents Act (AIA).
Recently, in Atlanta Gas Light Company v. Bennett Regulator Guards Inc., (IPR2013-00453, Paper 31, January 22, 2014) the Patent Trial & Appeal Board (PTAB) analyzed the interplay of an indemnification obligation as it relates to 35 U.S.C. § 312(a) and the 12 month window of 35 U.S.C. § 315(b). That is, does the existence of a contract/indemnification clause create privity between the contracting party under the IPR statutes, or render an indemnitor a real-party-in-interest with respect to the indemnified party? Read the rest of this entry »
Post Grant CLE Tomorrow at USPTO
Just a reminder that the 9th Annual Advanced Patent Law Institute is underway at the United States Patent & Trademark Office (USPTO. This two day program offers several post grant patent discussions tomorrow, including: AIA Practice Tips Before the Patent Trial and Appeal Board; Post-Grant Proceedings, Strategies and Practice; and Ex Parte Reexam in View of Fresenius – A Hail Mary Pass Which Should Be in Every Playbook.
Statistics Demonstrate Staggering Demand for PTAB Patent Challenge Proceedings
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 January 9, 2014 the Patent Trial & Appeal Board (PTAB) has received 810 IPR petitions and 108 CBM petitions, 922 petitions in total. Since the last update on November 7, 2013, the PTAB has seen 200 additional petition filings, quite impressive given the holiday season.
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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, it seems that patent owner’s are beginning to appreciate the limited value of preliminary responses.
Based upon early numbers, the settlement 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)
Patent Reform Effort Returns to Senate
The Senate Judiciary Committee will be scheduling additional staff hearings in the coming weeks on the potential impact of the proposed Patent Transparency & Improvement Act. The additional briefings are responsive to concerns of “unintended consequences” expressed during the last hearing, which was held in late December 2013. The additional hearings are expected to explore the concerns of universities, small innovators and new, smaller targets of evolving patent troll tactics.
With the House passing the Goodlatte Bill in short order at the close of 2013, Patent reform remains a hot issue. It is expected that Congress will continue to move forward at an accelerated pace so that some type of “reforms” can be in enacted into law in the first half of 2014. Given the fast track, it seems unlikely that major changes will be made to the Bill at this point in the legislative process.
PTAB Review Proceedings Force Change to Age Old Patent Prosecution Paradigm
As Bob Dylan once warned, you better start swimmin’ or you’ll sink like a stone….the times they are a changin.‘ While Bob clearly had some broader ranging social issues on his mind when he penned those lyrics, they are quite befitting of the outdated philosophies driving most U.S patent prosecution practices in the aftermath of the America Invents Act (AIA).
I’m not talking about the change over in March 2013 from the first-to-invent system to the first-inventor-to-file system of the AIA, but instead, the de facto switch in September 2012 from the “infringement first” philosophy of patent prosecution to the new, balanced patentability/infringement model. That is, before the introduction of the AIA post grant challenge mechanisms, Inter Partes Review (IPR), Post Grant Review (PGR), and the transitional program for Covered Business Method Patents (CBM), securing a maximum claim breadth was the primary driver of patent prosecution practices — the broader the better.
The infringement first philosophy is now dead— as will be your patent portfolio unless you change your tune.
Read the rest of this entry »
Virginia Joins Vermont, Nebraska and Others
Yesterday, the Virginia House of Delegates introduced House Bill No. 375, entitled Bad Faith Assertions of Patent Infringement. The bill tracks, in part, similar consumer protection bills introduced in Nebraska and Vermont. Nebraska has taken the matter a step forward and is now proposing that bad faith letters constitute deceptive trade practices, subject to criminal penalties.
These statutes can complicate matters for the handful of trolls that rely on letter writing campaigns for quick, $10,000 settlements (often mailing hotels and restaurants, claiming to own laser printing and/or basic WiFi concepts). These types of trolls are a relatively recent phenomena.
Meanwhile, the Senate is expected to turn to patent reform this month. As a reminder, with the Innovation Act (HR 3309) passed by the House a few weeks back, the Senate is expected to move forward on the companion bill in a matter of weeks.
USPTO Appeals to Grow for CAFC
In 2013 the patent-challenging public took notice of the USPTO’s Patent Trial & Appeal Board (PTAB) in a big way. With as many as 100 post-grant patent challenges being pursued per month at the PTAB, the unique considerations required to successfully navigate these proceedings from the PTAB on through to the Federal Circuit will become critical for patentees and third-party challengers alike.
Here is a link to my IP360 article on the topic, entitled 2 Fed. Circ. Rulings Will Impact PTAB Appeals In 2014.
PTAB Begins Front Loading IPR & CBM Schedules
The new patent challenge proceedings of the USPTO’s Patent Trial & Appeal Board (PTAB) are instantly distinguishable from the previous examiner-based, patent reexamination—perhaps most notably in speed. That is, an Inter Partes Review (IPR), Post Grant Review (PGR) or Covered Business Method (CBM) must conclude, by statute, within 12 months of institution. This turnaround is a dramatic improvement over the 3-5 year pendencies that plagued patent reexamination. For this reason, the PTAB has been a major disruption to the business of patent licensing and assertion in the U.S; especially to that of the dreaded “patent troll.”
For patentees faced with a PTAB post grant challenge it’s only getting worse. As of mid-December, the PTAB has accelerated trial schedules so that oral argument is scheduled a mere 7 months from trial institution. This is a full two months earlier than the previous default schedule. Read the rest of this entry »