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

Even Preliminary Proceeding Arguments Notice the Public

It is well-established that statements made by a Patent Owner during an inter partes review (IPR) can constitute prosecution disclaimer— even in papers filed by a Patent Owner before the trial. Aylus Networks, Inc. v. Apple Inc., No. 2016-1599 (Fed. Cir. May 11, 2017)

As a reminder, prosecution disclaimer prevents a patentee that clearly and unmistakably disclaimed a certain meaning for its patent claims during prosecution from recapturing this same meaning during claim construction in a subsequent litigation. As was the case in Aylus, Patent Owners are learning that the timing of such a disclaimer, or lack of express adoption by the Patent Trial & Appeal Board (PTAB), is of no moment. Continue Reading Beware Prosecution History in PTAB Trials

Director’s Precedent Setting Power Likely to Unravel Issue Joinder?

Four years ago, a divided panel of the Patent Trial & Appeal Board (PTAB) denied issue joinder under 35 U.S.C. § 315(c) as a matter of law (i.e., the joining of two petitions of a same petitioning party) in Target Corp. v. Destination Maternity Corp., (IPR2014-00508). The decision was remarkable at the time, given that 315(c) had been previously interpreted under multiple PTAB decisions as permitting such joinder practices. In fact, one such decision, Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper 17, Dec. 21, 2012, had even been published as a representative order on the PTO web site.

Target filed a request for rehearing challenging the decision.  In its Decision on Rehearing the PTAB expanded the panel reversed its original decision, granting Target’s petition for joinder and finding 315(c) to permit issue joinder. This decision became notorious thereafter as an example of the Board’s “panel stacking” to reach a desired outcome.  (At the time I explained this was more a function of the difficulty in designating decisions precedential rather than any nefarious design against Patent Owners, that is, the PTAB needed to pick a direction by brute force where conflicting decisions prevented a consensus vote of the Board)

More recently the USPTO has welcomed a new pro-patent Director that has made clear he believes the PTAB could use some pro-patent recalibration.  Recently, the agency has given the new Director the ability to make precedent virtually on his own. Based on a decision last week, it may be that the Director could unravel the Board’s chosen path on issue joinder to the delight of patent owners. Continue Reading Director Iancu to Unravel Panel Stacking Decision?

Assignor Estoppel Precluded by AIA Statutes…But What of Other Equitable Defenses?

The doctrine of assignor estoppel bars the assignor of a patent from challenging the validity of the patent after it is assigned. In considering this defense to an AIA trial proceeding, the Patent Trial & Appeal Board (PTAB) had consistently held that this common-law doctrine is subject to abrogation by statute, and that the AIA statutes do exactly that. The Federal Circuit recently agreed.

However, the Board has considered and applied other equitable defenses. For example, the Board has applied waiver (prior to the Federal Circuit’s determination that tribal immunity did not apply to the PTAB). Thus, equitable defenses that do not conflict with the AIA statutes may be leveraged.

One equitable defense that could become more prominent going forward —given the alignment of claim construction standards between the PTAB and courts— is judicial estoppel.

Continue Reading Equitable Defenses at the PTAB

New Proposal May Only Amplify Current Amendment Criticisms

A few weeks back, the USPTO published a Request for Comments (RFC) (here) on a proposed procedure for motions to amend in AIA Trial Proceedings. The proposal provides for a pilot program in which the parties are provided with an initial Board assessment of the proposed amendment. The assessment is provided early in the process. The idea being to provide for a meaningful opportunity for Patent Owner’s to revise proposed amendments where appropriate.

While the agency’s effort to improve the amendment process is to be applauded, its proposal will only increase Patent Owner costs and frustrations. Continue Reading How to Fix the PTAB’s Amendment Problem

Wednesday Chat to Address Recent Changes

The Patent Trial & Appeal Board will host a special “Boardside Chat” webinar on Wednesday, Nov. 7 from noon to 1 p.m. ET. The webinar is free and open to everyone.

The program will address a variety of recent changes to procedures, including the process of paneling cases (Standard Operating Procedure 2) and the process for issuing precedential decisions (Standard Operating Procedure 1). The program will also address the claim construction standard to be applied in AIA trials, which recently changed from the broadest reasonable interpretation to the standard used in federal courts. Lastly, it will explain the proposed changes to motion to amend practice that the agency recently published in the Federal Register.

Several PTAB judges will present and be available for questions, including: Acting Chief Judge Scott Boalick, Acting Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Tim Fink, and Vice Chief Judge Scott Weidenfeller. (access here)

Pilot Program Would Provide for Separate Briefing and Board Feedback

The USPTO has published a Request for Comments (RFC) (here) on a proposed procedure for motions to amend in AIA Trial Proceedings. The proposal provides for a pilot program in which the parties are provided with an initial Board assessment of the proposed amendment. The assessment is provided early in the process; providing meaningful opportunity to revise and oppose proposed amendments; and ensuring the amendment process concludes within the 12-month statutory timeline.

Specifically, the USPTO seeks public input on a proposed amendment process that would involve a preliminary non-binding decision by PTAB regarding the merits of a motion to amend. Continue Reading PTAB Proposes Changes to Amendment Practice