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

Tribal Immunity Considered by 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. This premise has been criticized by the Supreme Court in In re Cuozzo Speed Technologies, and, more recently by the Federal Circuit in Ultratec, Inc. v. Captioncall, LLC, 2017, (Fed. Cir. Aug. 28, 2017). For this reason, sovereign immunity (including tribal immunity) is likely to fall with the Oil States challenge.

Until such time, however, the PTAB must address the issue in the ongoing IPRs of Allergan’s Restasis® patents. In doing so, the PTAB has now issued an Order inviting amicus briefing, setting a submission deadline of December 1, 2017. Continue Reading PTAB Invites Amicus Input on Sovereign Immunity Dispute

Special PatentsPostGrant.com Webinar 11/28

On Monday, November 27th, 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.

The day after, 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 McKeown, Douglas 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).

User Activities vs. User-Driven, Hardware Function

Every so often a decision comes out of the Federal Circuit that has immediate value for patent prosecutors. Yesterday’s decision in Mastermine Software, Inc. v. Microsoft Corp., is one such case.

In Mastermine, the Court considered the extent to which user-initiated methodology of a Customer Relations Management (CRM) system may be recited in system claims. The district court found certain claims of the patents-in-suit (7,945,850 & 8,429,518), indefinite for improperly claiming two different subject-matter classes citing IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377(here).  The Federal Circuit reversed.

In its reversal, the Federal Circuit provided helpful guidance to patent prosecutors on how to claim user-driven hardware features in the first instance, as well as how to impress upon a patent examiner that functional language of such claims does not cross the line to reciting a separate statutory class. Continue Reading Patent Prosecutor’s Toolbox: Claiming User Functionality

Chat with the Chief

The PTAB is hosting its first “Chat with the Chief” webinar tomorrow, Tuesday, Oct. 24, from noon to 1 p.m. ET, on the topic of multiple AIA trial petitions. Chief Judge David Ruschke will discuss new stats about multiple petition filings, the General Plastic precedential decision addressing the factors the Board applies in deciding whether to institute follow-on petitions, and Board case management techniques. He also will answer audience questions.

The “Chat with the Chief” is free and open to the public. Webinar access information is provided on the PTAB event page.

Expanded Panel Decision Voted Precedential

On the heels of the recent issuance of an expanded panel decision in General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19), Section II.B.4.i.(here), the Patent Trial and Appeal Board (PTAB) has now designated this decision precedential.  Continue Reading PTAB’s New Precedential Guidance on Follow-on AIA Petitions

Aqua Products Decision Deemed “Good Cause”

Earlier this month the Patent Trial & Appeal Board (PTAB) determined, for the first time, that good cause existed to extend a trial beyond the mandated 12 months of 35 U.S.C. § 316(a)(11). While the Board has had trials extend beyond 12 months in cases of joinder — an existing exception to its 12 month mandate — this is the first time that the USPTO Director exercised his discretion to extend a trial schedule for “good cause.” Continue Reading First AIA Trial Extended Beyond 12 Months for Good Cause