General Plastic Factors & Follow-on Petitions

Last September, the Patent Trial & Appeal Board (PTAB) held that the advanced state of a district court proceeding militated in favor of denying a petition for IPR in accordance with the General Plastic factors (NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc). Given this holding, Patent Owners may now consider speedier forums, such as the International Trade Commission (ITC) as providing incremental protection from a PTAB challenge.

Last week, the Board clarified that consideration of late stage parallel proceedings is done only in the context of assessing discretionary institution of “follow-on” petitions under 35 U.S.C. § 314(a).  In doing so, the Board also highlighted that an advancing ITC action (even in a follow-on petition scenario) may be of a lesser concern than a district court proceeding given its unique nature. Continue Reading Co-Pending ITC Action Less of an Equitable Concern for PTAB?

New Presentation of Same IPR Art Thwarted by Estoppel

Post SAS, there are fewer exceptions to IPR estoppel. Indeed, the absence of partial institutions has led to many courts finding the “reasonably could have raised” aspect of IPR estoppel to be broader than just the art of the ultimate Patent Trial & Appeal Board (PTAB) trial. As such, unsuccessful petitioners are now exploring alternative theories.

In The California Institute of Technology v. Broadcom Limited, et al., (here) the Central District of California found that IPR estoppel applies where the same IPR reference is later raised under the “known or used” prong of pre-AIA 35 U.S.C. § 102(a), rather than as a “patent or printed publication” as in the IPR. Continue Reading IPR Art Simultaneously Qualifying as Known or Used Subject to Estoppel

PTAB Success a Relevant Consideration Under 35 U.S.C. § 285

After Octane Fitness, district courts “may determine whether a case is ‘exceptional’ in the case-by-case exercise of their discretion, considering the totality of the circumstances,” looking at substantive strength of a party’s litigating position or the unreasonable manner in which the case was litigated.

As one recent decision makes clear, not only can a successful PTAB trial aid a litigation fee dispute, but the PTAB fees themselves may be recoverable. Continue Reading Leveraging Your PTAB Record to Secure Attorney Fees in District Court

Seeking More Granularity on Patent Pools?

Patent pools and groupings of standard essential patents (SEPs) facilitate one-stop shopping of patent licensees. When operated fairly, these arrangements can provide meaningful efficiencies to licensors and licensees alike. On the other hand, there is also ample room for abuse given the brute strength of such large portfolios.

While the Patent Trial & Appeal Board (PTAB) can be an appealing solution to combat improvidently granted patents, it is not a realistic option for an implementer facing a large pool that might include patents of questionable merit.  Thus, when this “big stick” leverage is abused, unreasonable license valuations/demands can go unchecked. When such undesirable economic practices are multiplied across pools, “royalty stacking” becomes especially problematic for implementers, and ultimately, consumers. Continue Reading Dealing with SEP Demands & Royalty Stacking

101 Guidance To Relax Patentability Standard?

Today, the USPTO announced revised guidance for subject matter eligibility under 35 U.S.C. § 101 (here). The USPTO also announced guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions (here). The documents will be published in the Federal Register on Monday, January 7, 2019.  While these documents request comments from the public, both are effective on Monday.

The “2019 Revised Patent Subject Matter Eligibility Guidance” makes two primary changes to how patent examiners apply the first step of the U.S. Supreme Court’s Alice/Mayo test, which determines whether a claim is “directed to” a judicial exception.

  • First, in accordance with judicial precedent and in an effort to improve certainty and reliability, the revised guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes certain groupings of subject matter: mathematical concepts, certain methods of organizing human activity, and mental processes.
  • Second, the revised guidance includes a two-prong inquiry for whether a claim is “directed to” a judicial exception. In the first prong, examiners will evaluate whether the claim recites a judicial exception and if so, proceed to the second prong. In the second prong, examiners evaluate whether the claim recites additional elements that integrate the identified judicial exception into a practical application. If a claim both recites a judicial exception and fails to integrate that exception into a practical application, then the claim is “directed to” a judicial exception. In such a case, further analysis pursuant to the second step of the Alice/Mayo test is required.

While this test mentions patent examiners specifically, it is expected that the entire agency (i.e., PTAB judges) will also follow this framework. (It remains to be seen whether the Federal Circuit will agree that reigning in the abstract idea step of Alice/Mayo to focus on judicial exceptions is consistent with established law).

As to the second set of guidelines, the “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112” this guidance emphasizes various issues with regard to § 112 analysis, specifically as it relates to computer-implemented inventions. The guidance describes proper application of means-plus-function principles under § 112(f), definiteness under § 112(b), and written description and enablement under § 112(a).

This effort addresses an issue that the Office consistently confuses.

PTAB 2018: A Year of Agency Recalibration

The Patent Trial & Appeal Board (PTAB) stole much of the 2018 patent law spotlight. From landmark Supreme Court decisions such as Oil States and SAS Institute, to significant en banc Federal Circuit decisions in WiFi-One, PTAB practice evolved more in 2018 than in any prior year. That said, the most impactful 2018 changes for practitioners were driven by the agency.

Under the pro-patent leadership of Director Iancu, the agency is expected to drive still further change in 2019. Continue Reading Top 5 PTAB Practice Developments of 2018

USPTO & Congress to Tackle 101

As we close out 2018, there may be some hope on the horizon for those confounded by the current state of patent eligibility determinations under 35 U.S.C. § 101.

On the legislative side, Senators Coons (D-Del) and Thom Tillis (R-N.C.) will host a closed-door meeting tomorrow, Dec. 12th, to discuss potential legislation to rework the definition of patent eligibility. Invited to this meeting are a number of large players from the tech community (Google, Amazon, Apple, Qualcomm) and life sciences industry groups (PhRMA, and the BIO).  When it comes to this particular topic, this is like trying to broker a deal between the Hatfields and the McCoys; but, it’s a start.

The Hill meeting comes on the heels of recent bar association proposals to Congress on possible 101 changes, and undoubtedly, consistent lobbying from impacted industries.

The same hue and cry has been resonating with the USPTO. Director Iancu has been promising new 101 guidelines that translate step 1 of Alice into a simple determination of whether the claims are directed to one of the categories of judicial exceptions. But even if this is the case, unpatentability would only exist where the claim provides a practical application of such an exception. While certainly greatly simplified, it remains to be seen if regulatory guidelines can drive change external to the agency.

With grandiose legislative initiatives like Coons’ STRONGER Patents Act withering on the vine, it looks as if Congress is moving to a more focused agenda for 2019.

Stay tuned.

PTAB Issue Joinder Practices to End

As I predicted a few weeks back, the Patent Trial & Appeal Board is now moving Proppant Express Investments, LLC, Proppant Express Solutions, LLC v. Oren Technologies, LLC, (IPR2018-00914) to the Precedential Opinion Panel (POP). This is the first case to be taken up by the new POP.

As a reminder, in Proppant a divided panel denied issue joinder under 315(c), explaining that the statutory language precluded “join[ing] new issues to an existing proceeding whether raised by the same petitioner or a different petitioner.” The Board noted the conflict this decision present with earlier decisions on the topic (known to many as the “panel stacking” decisions).

The Board explained in its Order, (here):

This case presents an issue for Precedential Opinion Panel (“POP”) review. Board decisions conflict on the proper interpretation of 35 U.S.C. § 315(c). Compare, e.g., Target Corp. v. Destination Maternity Corp., Case IPR2014-00508 (Paper 28) (Feb. 12, 2015) (concluding that 35 U.S.C. § 315(c) permits a petitioner to be joined to a proceeding in which it is already a party), with SkyHawke Techs.,
LLC v. L&H Concepts, LLC, Case IPR2014-01485 (Paper 13) (Mar. 20, 2015) (reaching opposite conclusion). A POP review is appropriate to address the following questions:

1. Under 35 U.S.C. § 315(c) may a petitioner be joined to a
proceeding in which it is already a party?

2. Does 35 U.S.C. § 315(c) permit joinder of new issues into an
existing proceeding?

3. Does the existence of a time bar under 35 U.S.C. § 315(b), or any
other relevant facts, have any impact on the first two questions?

The POP will consist of: Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Drew Hirshfeld, Commissioner for Patents, and Scott R. Boalick, Acting Chief Administrative Patent Judge.

Amicus briefing will be accepted on or before December 28, 2018.

Boardside Chat & Special PLI Briefing

For those seeking Patent Trial & Appeal Board (PTAB) related CLE/programming this month, the PTAB itself is hosting a Boardside Chat webinar this Thursday, Dec. 6th from noon to 1 p.m. ET.

The topic of the webinar is hearsay and authentication before the Board. Lead Judge Michael Zecher along with Judge Tom Giannetti and Judge Grace Obermann will present.  There will be a Q&A session at the end of the presentation. The webinar is free and open for everyone to attend.

Access information is available (here)

On Wednesday December 12th @ 1PM (EST) the Practicing Law Institute (PLI) hosts: Is Amending at the PTAB About to Become Even More Difficult? 

This program will explore the practical implications of recent/proposed PTAB trial practice changes such as switching claim construction standards, adopting new claim amendment procedures, and managing trial scheduling in this new environment. I hope you can join, me, and my co-panelist Rob Greene Sterne of Sterne, Kessler, Goldstein & Fox, P.L.L.C., for this timely discussion.

Register (here)

Efficiency Considerations Determined at the Time of Institution

Since the unraveling of partial institution practices in SAS Institute, stakeholders have speculated that the Patent Trial & Appeal Board may begin denying petitions that present administrative inefficiencies. For example, where a petition attacking 30 claims is assessed as failing to meet the threshold standard for 29 of the 30 claims, the Board may exercise its discretion to deny the petition in the interest of efficiency.

Such a situation was recently presented in Chevron Oronite Company LLC v. Infineum USA L.P. (here). Continue Reading Leveraging SAS Leftovers to Avoid PTAB Institution