The Tension Between Judicial Independence & Agency Consistency

As I have pointed out previously, the Board struggles to issue precedential decisions. This is because the Board (now approaching 300 judges) must reach a “sufficient majority” consensus on an issue before designating it precedential. As a practical matter, this outdated process excludes all but the most straight forward questions of law from receiving enough “yes” votes to be designated precedential.

To be sure, such disparity in opinion across a large number of judges is not surprising on close questions of law. Reasonable minds differ. Which is why it is somewhat surprising that 98% of PTAB merit-based decisions are unanimous. Continue Reading Judicial Independence & The PTAB

Best Practices for Presenting Prior Art

Join the PTAB for the final Boardside Chat webinar of 2017 today, Dec. 7 from noon-1 p.m. ET. The chat will discuss “Best Practices for Presenting Prior Art References and Proving a Document is a Printed Publication.”

PTAB Judges Lora Green and Brian McNamara will present and address audience questions. This topic is relevant to both ex parte appeal and AIA trial proceedings. The webinar is free and open to everyone. (view here)

Functional Claiming & PTAB Ethics in December

For those seeking some CLE before the holiday break, there are some interesting webinars on the immediate horizon.

Today, on the IPO Chat Channel, Functional Claiming After Mastermine Software v. Microsoft.  Functional claiming and definiteness standards will be analyzed in view of recent Federal Circuit decisions. (register here)

Later this month, AIPLA offers a PTAB related webinar: Ethic Issues in PTAB Proceedings (register here)

Tribal Immunity in Focus at PTAB

Previously I explained that the 7th amendment argument in Oil States and the 11th amendment argument for sovereign immunity from the PTAB are both tied to the same basic, threshold premise — IPR is a trial proceeding akin to an Article III lawsuit. Recent amicus filings supporting the petitioner echo that sentiment.

In response to the PTAB Order earlier this month authorizing amicus briefing, input from a number of organizations has been received.  The complete set is linked below.

Amicus Curiae Brief of the Oglala Sioux Tribe (here)

Amicus Curiae Brief of the Public Knowledge and the Electronic Frontier Foundation (here)

Amicus Curiae Brief of Scholars (here)

Amicus Curiae Brief of Askeladden LLC (here)

Amicus Curiae Brief of Deva Holding A.S. (here)

Amicus Curiae Brief of the High Tech Inventors Alliance (here)

Amicus Curiae Brief of the Seneca Nation (here)

Amicus Curiae Brief of the NAIPEC (here)

Amicus Curiae Brief of U.S. Inventor, LLC (here)

Amicus Curiae Brief of the SIIA (here)

Amicus Curiae Brief of The National Congress of American Indians et al.(here)

Amicus Curiae Brief of Luis Ortiz and Kermit Lopez (here)

Amicus Curiae Brief of The Association for Accessible Medicines (here)

Amicus Curiae Brief of The BSA | The Software Alliance (here)

Amicus Curiae Brief of James R. Major (here)

High Court Poised to Endorse PTAB & Partial Institution Practices

While I will discuss my more detailed impressions during tomorrow’s webinar, a few quick thoughts.

Oil States

-Article III review of the PTAB, and more particularly de novo review of legal issues, was key to a majority of Justices.

-Trying to distinguish reexamination and IPR never made sense in view of Cuozzo, and it backfired on petitioner.

-Justice Gorsuch appeared to be the only one accepting the real property analogy to patents.

-Patent validity did not resonate as a private right.  The distinction between validity (public) and infringement (private right) appeared to be accepted by the majority.

Prediction: Affirmance. (8-1 or 7-2) — Transcript (here)

SAS Institute

-I assumed this case (given its rather mundane issues from a SCOTUS perspective) was taken as a vehicle to reign in Chevron Deference. Chevron never came up, just straightforward statutory interpretation issues.

-With the exception of Justices Gorsuch and Alito, everyone else seemed to accept the PTAB interpretation given the discretion expressed across the statutory scheme of the AIA.

-The lack of amicus filings (only 1) made clear that this is the case nobody wants; the Court got the message.

Prediction: Affirmance (7-2) — Transcript (here)

Special PatentsPostGrant.com Webinar Tuesday 11/28

Today the Supreme Court will hear oral arguments in both the Oil States and SAS Institute appeals. Both cases have the potential to have a significant impact on proceedings at the Patent Trial and Appeal Board (PTAB) and, potentially, the entire U.S. patent system.  (Follow me on Twitter @PatentPostGrant for thoughts immediately following the arguments.)

Tomorrow, November 28th, PatentsPostGrant.com will host a free webinar to debrief the oral arguments, and offer insights on the possible practice changes stemming from the forthcoming decisions. (Speakers: Scott McKeownDouglas Hallward-Driemeier and Matthew Rizzolo)

The formal portion of the webinar will begin at 1:30 (EST) and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period. To attend the webinar please sign up (here). You will receive a registration confirmation email immediately. Two hours prior to the webinar you’ll receive another email with a link and instructions for joining the presentation.

CLE credit is provided (CA, NYC, VA only).

No Duty to Discuss Closest Prior Art…But you Probably Should Anyway

In implementing the Federal Circuit’s In Re Aqua Products’ holding, the Patent Trial & Appeal Board (PTAB) explains that “practice and procedure before the Board will not change.” And that, “[t]he Board will continue its current briefing practice as to the types, timing, and page limits of briefs.”

As pointed out previously, removing the burden from the Patent Owner Motion to Amend will aid the PTAB in granting far more motions, but ultimately, amendments are not expected to be any more attractive, or common. Continue Reading PTAB: Practice & Procedure Unchanged after Aqua Products

Standard Operating Procedures (SOP) 9 Released

As discussed last week, a remand to the Patent Trial & Appeal Board (PTAB) may be a short-lived victory for Patent Owners.

The PTAB has now officially revised the “Standard Operating Procedure 9 (SOP9)” directed to default procedures for cases remanded from the Federal Circuit.

Some highlights:

  • PTAB has set a goal of issuing remand decisions within 6 months of the Federal Circuit’s mandate.
  • Panels will now meet with the Chief, Deputy Chief, or their delegates (i.e., one of the Vice Chief Judges) to discuss the remanded case and issues presented therein.
  • PTAB has set forth default procedures for trials and appeals regarding whether further briefing, evidence, or oral hearings are warranted in individual case and whether prosecution will be reopened.

For more details, please read the revised SOP 9 (here).

Long Delayed Fee Increase Hits January 16th

Section 10 of the Leahy‐Smith America Invents Act (AIA) authorizes the United States Patent and Trademark Office (USPTO) to, in part, “set or adjust by rule any fee established, authorized, or charged” under Title 35 of the United States Code. At 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. A Final Rule Notice issued today setting significant increases to take effect on January 16th 2018 for AIA Trial Proceedings. Continue Reading PTAB Trial Fees Set to Increase in January

Remand or Reversal?

Appeals from the Patent Trial & Appeal Board (PTAB) have now become a major component of the Federal Circuit’s docket. Given the deferential “substantial evidence” standard accorded PTAB decisions, upward of 60% of such appeals are simply affirmed — many without further comment. The remainder of PTAB appeals  include a mixed bag of partial affirmances, reversal and/or remands. While both reversal and remand outcomes are appellate “wins” for Patent Owners, a remand for a Patent Owner is often a winning of the Federal Circuit appeal battle only to lose the PTAB war. Continue Reading PTAB Revisited: Avoiding Federal Circuit Remands