Post-Grant Review
By Scott A. McKeown
| April 17, 2017
Denied Petition Grounds May Be Relevant to PTAB Trial

CAFC Emphasizes that Art of Denied Petition Grounds Can Come Back to Haunt Patentees


It is not uncommon for an AIA Trial Proceeding, such as Inter Partes Review (IPR), to be instituted on a subset of unpatentability grounds presented in the petition. For example, IPR is currently granted on a claim-by-claim basis.  That is, petition grounds can be accepted or denied based upon the Patent Trial & Appeal Board's (PTAB) conclusions as to whether a reasonable likelihood of prevailing is shown for a given patent claim.

In the case of partial PTAB trial institutions, Patentees will often employ a strategy to formally object to the aspects of the preliminary record that include reference to prior art of the denied grounds.  The thinking here is that the objection will preserve the right to exclude this seemingly irrelevant art from the record at the close of trial. 37 C.F.R. § 42.64. Yet, art of a denied petition ground can be (and usually is) highly relevant at trial.

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By Scott A. McKeown
| March 23, 2017
PTAB Preliminary Response Evidence Remains Unpopular

Preliminary Responses Accompanied by Declaration Evidence: Updated Results 


Back on May 1st, the Patent Trial & Appeal Board (PTAB) began to accept new testimonial evidence with patentee preliminary responses.  The PTAB implemented this change to address complaints that patentees were disadvantaged by previous rules precluding such evidence from accompanying a preliminary response to the petition. It was argued that the previous rules were especially imbalanced as almost all petitions were accompanied by petitioner declaration evidence.  I had my doubts.

Now that we are approaching a year removed from the rule modification, some updated results.  

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By Scott A. McKeown
| February 22, 2017
Is In re Packard the Correct Standard for AIA Trials?

In re Packard Inextricably Linked to Patent Examination Practices?


Back in 2014, the Federal Circuit determined the standard for a USPTO indefiniteness analysis in In re Packard (here). This standard was more deferential to the agency as compared to the district court's "reasonable certainty" standard later enunciated in Nautilus v, Biosig Instruments Inc.  When Packard issued, I questioned whether that standard could be argued to apply to post-grant proceedings. This was because the Court's determination in Packard was deeply rooted in patent examination practices.

More recently, the Patent Trial & Appeal Board (PTAB) has adopted Packard in some of its decisions analyzing claims under 35 U.S.C. § 112 (e.g., PGR20015-00018, Telebrands Corp. v. Tinnus Enterprises LLC). But, decisions of the Federal Circuit since Packard, have made clear that grounds of unpatentability in AIA trial proceedings are not akin to rejections in patent examination.  As explained by the court in In re Magnum Oil Tools Int’l, Ltd. the prima facie procedural mechanisms of patent examination do not comport with proper AIA trial practices.

Will the CAFC pull the rug out from under the PTAB's application of Packard in AIA trails?

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By Scott A. McKeown
| February 10, 2017
Article III Standing Found for PTAB Appeal Where Threat of Suit

Article III Standing for PTAB Appeals Once Again Revisited by Federal Circuit


Last month, the Federal Circuit made clear that Article III standing is necessary for petitioners to appeal from adverse decisions in AIA trial proceedings in Phigenix, Inc. v. ImmunoGen, Inc. (here)  The Phigenix decision follows an earlier decisionConsumer Watchdog v. Wisconsin Alumni Research Foundation (Warf) finding the same Article III standing requirement for the now defunct inter partes patent reexamination. 

Yesterday, in PPG Industries, Inc., v. Valspar Sourcing, Inc., the Federal Circuit again addressed the issue of standing in appeals from the Patent Trial and Appeal Board (PTAB). At issue in these consolidated appeals was whether PPG Industries, Inc. (“PPG”) had standing to appeal the PTAB’s decisions in two inter partes reexaminations where the patent owner Valspar Sourcing, Inc. (“Valspar”) was the prevailing party. Showcased in this appeal is evidence deemed to satisfy Article III standing for an appeal from the PTAB.
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By Scott A. McKeown
| January 25, 2017
Phigenix/WiFi a Double Bind for Future PTAB Privity Disputes?

Burden of Production on Article III Standing to Bolster 315(b) Disputes at CAFC?


Two weeks back, the Federal Circuit made clear that Article III standing is necessary for petitioners to appeal from adverse decisions in AIA trial proceedings. Phigenix, Inc. v. ImmunoGen, Inc. (here)  The Phigenix decision follows an earlier decision, Consumer Watchdog v. Wisconsin Alumni Research Foundation (Warf) finding the same Article III standing requirement for the now defunct inter partes patent reexamination. Thus, Phigenix was expected given that differences in AIA trial proceedings and patent reexamination are inconsequential with respect to the standing debate (and in virtually all other respects).

While Phigenix is well on the radar of public interest groups and like organizations that seek to institute an AIA trial proceeding on patents of interest, the impact of this decision could complicate appeals for certain operating companies should the en banc decision in Wifi One play out as expected.
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By Scott A. McKeown
| January 3, 2017
PTAB Trials to Increase in Cost for 2017

Fee Setting Authority to be Exercised in 2017 

The USPTO discussed its first ever fee increase under the fee setting authority of the America Invents Act (AIA) in November of 2015.  At the time, an initial proposal was provided to the Public Patent Advisory Committee (PPAC) for review.  While the hope was to have the proposed fee adjustments take effect on October 1, 2016 (start of FY 2017), significant stakeholder feedback and considerations have, understandably, slowed the rule making process.

Prior to the close of 2016, a Notice of Proposed Rule Making (NPRM) issued requesting comments from the public on proposed fee increases for post-grant patent proceedings, including AIA trials.  With comments collected last month, a Final Rule Notice is imminent.  

Expected Patent Trial & Appeal Board (PTAB) fee increases include:

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By Scott A. McKeown
| December 14, 2016
CAFC Explains PTAB Expertise & Its Role In IPR Fact Finding

Expert Agency Need Not Accept Expert Testimony


AIA trial practices of the Patent Trial & Appeal Board (PTAB) are often analogized to that of the district courts. Yet, in practice, there are more differences than similarities between the two. The PTAB, unlike the district courts, is an expert agency. For this reason, its decisions are reviewed on the substantial evidence standard of the Administrative Procedure Act (APA). 5 U.S.C. § 706. Further the PTAB applies the preponderance of the evidence evidentiary standard, which stands in stark contrast to the clear and convincing standard of the district court.  Taken together, these two foundational differences are worlds apart from district court trial practices, and, serve as the primary drivers behind the appeal of the PTAB to patent challengers.

Counsel more accustomed to the favorable patentee standards of the district courts, often times find themselves struggling with the seemingly bizarro world of PTAB administrative trials— such as the agency's ability to disregard expert testimony that would be given weight in the district courts.
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By Scott A. McKeown
| December 6, 2016
PTAB BoardSide Chats for 2017

PTAB Specific Webinars Offered by USPTO


The full slate of 2017 Boardside Chat webinars have been announced for 2017. The BoardSide Chat series is a bi-monthly webinar that is free to the public. As with past webinars, the Board will share updates on topics related to ex parte appeals and AIA trials. There will be time during each webinar for audience questions and feedback.

Please see the schedule below:
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By Scott A. McKeown
| November 10, 2016
Are Partial AIA Trial Institutions a Good Thing?

Dispute Over AIA Trial Institution Practices ...Be Careful What You Wish For


Since the advent of AIA trials, opponents of the system have attempted to unravel them.  First, BRI was challenged, then 7th amendment constitutionality, and a host of other administrative issues; all have failed to date. Yet, a few challenges to fundamental AIA trial practices persist. Earlier this week, the Federal Circuit denied en banc review in one such remaining challenge, in SAS Institute Inc., v. ComplemenSoft LLC.  

As previously discussedSAS challenged all sixteen claims of ComplementSoft’s patent 7,110,936 in inter partes review (IPR). Trial was instituted for claims 1 and 3-10, but claims 2 and 11-16 were denied institution. On appeal to the CAFC, SAS argued that it was inefficient to institute on only a subset of claims, and that the controlling rule authorizing partial institution (37 C.F.R. § 42.108(a) was in direct conflict with statutes 35 U.S.C. §§ 314(a)/318(a); the Federal Circuit disagreed (Judge Newman dissenting).

If it were agreed that the statute "at least one claim" is in conflict with the rule (perhaps on eventual appeal to the SCOTUS) is this really something petitioners or patentees should want?  

Probably not.
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By Scott A. McKeown
| October 17, 2016
PTAB to Adjust Attorney Client Privilege Rule

Privilege Expanded to Cover Communications with Foreign Agents


Tomorrow's Federal Register will include a NPRM to amend the rules of practice before the Patent Trial and Appeal Board (PTAB). The proposed rule recognizes that, in connection with discovery conducted in certain proceedings at the United States Patent and Trademark Office, communications between U.S. patent agents or foreign patent practitioners and their clients are privileged to the same extent as communications between clients and U.S. attorneys. (advanced copy here)

The rule would apply to Inter Partes Review (IPR), Post-Grant Review (PGR), the transitional program for Covered Business Method (CBM) patents, and derivation proceedings. This rule would clarify the protection afforded to such communications, which is currently not addressed in the rules governing Board proceedings at the USPTO.

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