Leveraging PTAB 101 Determinations in Parallel Litigation

Covered Business Method (CBM) challenges have fallen out of favor with petitioners. This is due to a number of factors, not the least of which is the narrowing of CBM jurisdiction after Unwired Planet. Of course, this 101 challenge option will go away shortly as CBM will sunset in 2020. But, as more patents become eligible for Post Grant Review (PGR), the ability to challenge patent eligibility under 35 U.S.C. § 101 is slowly expanding to all patents.

Given the expanding option to file a PGR to challenge patent eligibility under 101 alongside art-based challenges, is it better to do so (if possible within the 9-month PGR window), or to simply wait out the 9-month window for Inter Partes Review (IPR)?

While 101 challenges can be especially lethal post-Alice, parallel tracking your 101 case at the Patent Trial & Appeal Board (PTAB) is not without its risks. Continue Reading 101 PTAB Challenges Might Come Back to Haunt Your Parallel Litigation

PTAB CLE Address Recalibration of Board Trial Practices

A few Patent Trial & Appeal Board (PTAB) related CLEs in October, all of which offer differing perspectives and topics.

First up is the IPO Chat Channel. This Wednesday October 17th @ 2-3PM EST, I, along with my co-panelists, will explore the impact of the PTAB’s switch from BRI to Phillips in a program entitled: A Surge to the PTAB? Filing and Litigation Strategy in the Light of the Upcoming Change to the Phillips Standard

Register: (here).  

Next week, there are two programs on Wednesday October 24th.

First, the October edition of the PatentsPostGrant.com webinar series will be held @ 1-2PM EST, entitled Adapting to the New Patent Trial & Appeal Board (PTAB).  This months program will include special guest Jonathan Bowser, Senior Patent Counsel for Unified Patents and will explore a host of changes, trends and expected shifts in PTAB and parallel litigation strategies for both petitioners and patent owners.

Register: (here)

Finally, also on Wednesday October 24th @ 3PM (EST), PLI will host a one hour debrief entitled: The Reinvention of the Patent Trial & Appeal Board. This program will view the current political landscape of the agency and how that may impact further changes and existing practices before the Board, as well as legislative initiatives.

Register: (here)

I hope you are able to join me at one of these upcoming programs.

Invalidity Contentions Serve as Estoppel Benchmark

A Patent Owner may only avail itself of an IPR estoppel defense in court upon demonstrating that a competent prior art search would have uncovered the art that is asserted post-IPR (i.e., raised or reasonably could have raised during the IPR. 35 U.S.C. § 315(e)(2))  This demonstration of proof can be complicated by a number of factual questions such as the degree of skill of the searcher, the complexity of the art, and what was known by the petitioner and when.

A recent decision in the Southern District of Texas looks to simplify such disputes by utilizing invalidity contentions as estoppel markers.  Continue Reading Invalidity Contentions as IPR Estoppel Markers

Final Rule Publishes Tomorrow

As predicted last week, the final rule package to switch the to the Phillips claim construction for AIA trial proceedings at the Patent Trial & Appeal Board (PTAB) will publish Thursday. (advanced copy here). The change will apply to inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) proceedings before the PTAB.

The final rule replaces the “broadest reasonable interpretation” standard with the federal court claim construction standard that is used to construe a claim in a civil action under 35 U.S.C. § 282(b). This is the same claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Additionally, under the final rule, when construing a claim term in an IPR, PGR, or CBM, the PTAB will take into consideration any prior claim construction determination that has been made in a civil action, or a proceeding before the International Trade Commission (ITC), if that prior claim construction is timely made of record in that IPR, PGR, or CBM.  The weight accorded to such determinations will vary depending upon circumstances.

The final rule will not be retroactively applied and instead will apply only to IPR, PGR, and CBM petitions filed on or after the effective date of the final rule, which is Nov. 13th, 2018.

Phillips Claim Construction Rule Imminent

Back in May, the USPTO issued a Notice of Proposed Rulemaking to switch from the Broadest Reasonable Interpretation (BRI) standard to a Phillips claim construction for AIA Trial Proceedings (here).  Thereafter the agency collected comments from the public, most of which favored the change, and submitted the issue to the Office of Management & Budget (OMB) for final regulatory approval. On Wednesday October 3rd the regulatory approval was given by OMB’s Office of Information & Regulatory Affairs (OIRA).  Thus, the USPTO may now publish a Final Rule Package to make the proposed switch to Phillips.

The Final Rule Package, which I expect will publish in the Federal Register next week does not take effect immediately. Rather, there will be an effective date 30-60 days after the date of publishing. Assuming publication next week, that would provide an effective date as early as the first full week of November, or as late as December. (There have been discussions that this change would be retroactive, but that is not my expectation. Too much re-work for existing proceedings, and on the heels of SAS, I just don’t see it.)  I expect that any petition filed on or after the effective date will be subject to the Phillips standard.

As I have pointed out previously, while I don’t expect this change will impact trials in a significant regard, it will impact filing strategies. That is, there will be an avalanche of petitions coming into the PTAB before the effective date. Continue Reading PTAB Rule Package Dropping BRI Clears Final Hurdle

Upcoming Event in DC to Explore a Host of Hot Topic Issues

One of the more cutting edge CLE events of the year is IAM’s Patent Law & Policy. The program explores the overlap in changing legal and political climates, especially relevant in a year of mid-term elections.

The program drills down to the trends and changes across the patent landscape of the previous year, particularly the impact of political interests and stakeholder agendas as drivers of policy going forward under the Trump administration. This program has become a must event for anyone interested in patent law policy, legislation and rule-based initiatives.

This year’s keynote speaker is the leader of the House Judiciary and Rules Committee Rep Doug Collins (R-Ga).  The program also will include commentary from Senate Judiciary Committee staffers, as well as segments directed to SEP/FRAND issues, litigation changes, and of course, PTAB developments.

I hope to see you there.

Patent Law & Policy 2018 (register here)

Change in Claim Construction Standard Provides Greater Appellate Opportunity

Some months back the Patent Trial & Appeal Board (PTAB) proposed dropping the broadest reasonable interpretation (BRI) in favor of the so-called “Phillips construction” of the courts. That final rule package, while expected to have been issued by now, is hung up in the Office of Management & Budget (OMB) for regulatory review. (While described in the proposed rule as a change that was not deemed “significant,” should OMB disagree, the final rules will be delayed until the necessary regulatory hoops can be navigated).  Nevertheless, whether in 2018 or 2019, it is clear that the agency intends to move PTAB trial proceedings away from BRI to the Phillips standard.

While this change may not move the needle very much for PTAB trials, it should provide enhanced appellate opportunity. Continue Reading What a Phillips Construction Could Mean for PTAB Appeals

New SOPs Demystify Internal Practices & Consolidate PTAB Policy Control to Director

The PTAB has substantially revised its Standard Operating Procedures (“SOPs”) regarding paneling of matters before the PTAB (SOP1) and precedential and informative decisions (SOP2).

SOP1 largely explains existing internal processes relating to assignment/reassignment of judges in the interests of increasing transparency, predictability, and reliability across the USPTO. More specifically, revised SOP1 explains the procedures for panel assignment and for informing parties regarding panel changes. It also explains the process for designating panels with more than three judges, and notes that such panels should be rare and will only occur with the approval of the Director.(here)

Revised SOP2 is likely to draw the most interests as it creates a Precedential Opinion Panel (POP) that effectively moves the previous PTAB precedent setting power away from the judges to the domain of the agency executives.  Continue Reading PTO Director to Drive PTAB Precedent Going Forward

Rebutting the Presumption of Unreasonability

Given the complications associated with amending litigated claims, amendment is still relatively rare at the Patent Trial & Appeal Board (PTAB).  Yet, there remain Patent Owners willing to amend claims in limited scenarios. For these Patent Owners, the Board has provided some helpful guidance post Aqua Products.  As a reminder, newly designated precedent Western Digital Corp. v. SPEX Techs., Inc has replaced now de-designated precedent/informative decisions of MasterImage 3D, Inc. v. RealD Inc.,Case IPR2015-00040 (PTAB July 15, 2015) (Paper 42) and Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027 (June 11, 2013) (Paper 26).

However, Aqua Products did not overrule all aspects of these earlier decisions despite their de-designations. So, the question remains as to the continued viability of some of these earlier positions — such as the standard for assessing a “reasonable number” of substitute claims.

In a decision issued today, the Board emphasized that adding claims beyond a 1-1 substitution creates a presumption of unreasonability.  And, that rebutting that presumption may not necessarily require a showing of patentable distinctness between multiple substitutes, as previously explained in Idle Free. Continue Reading PTAB Debates Standard for Reasonable Number of Substitute Claims

Claimed Ranges Overlapping with Prior Art Shift Burden of Production to Patent Owner

Since the Federal Circuit’s decision in Magnum Oil, the Patent Trial & Appeal Board (PTAB) has been mindful that the ultimate burden of persuasion must remain with the patent challenger. While this general rule guides most proceedings at the PTAB, as the Federal Circuit reminded the Board today, there are exceptions for the burden of production.

In E.I. Dupont De Nemours v. Synvina C.V. the Court considered whether a claimed range shown to be overlapping with that of the prior art creates a rebuttable presumption of obviousness. The Court reiterated that it did, and that once an overlap is shown by a Petitioner, it falls to the Patent Owner to come forward with appropriate rebuttal evidence. Continue Reading CAFC Explains PTAB Burden Shift for Claimed Ranges