December 2014

Petition Must Establish Grounds of Unpatentability

The reason for presenting a declaration in support of an AIA trial petition is simple — evidence is superior to attorney argument. Likewise, the Patentee will invariably respond with their own declaration once trial is ordered. Indeed, not filing a declaration together with the petition will likely foreclose rebuttal opportunity. Furthermore, as the patentee may not introduce new testimonial evidence at the time of the preliminary response, the petition declaration (if properly developed) should insulate the petition from being denied by the PTAB. For these reasons, most every IPR, PGR or CBM petition filed to date has been accompanied by a supporting declaration of one of skill in the art.

Declarations do not have page limits. On the other hand, the page limit on petitions is tight (60 pgs. IPR; 80 pgs. PGR/CBM). As a result, some have begun relying a bit too much on declarations in an attempt to side-step the petition limits. Last week, the PTAB designated an order from last summer “informational” to inform the public that such “incorporation by reference” strategies will result in petition denial.   …
Continue Reading PTAB Cautions on Petition Shortcuts

Stays Pending IPR Granted in Most Cases

Prior to the passage of the America Invents Act (AIA) many district courts were less than impressed with the lengthy pendencies of USPTO patent reexamination proceedings. For this reason, motions to stay a litigation pending patent reexamination were often denied based upon the perceived prejudice of a 5-6 year delay (typical of reexaminations through appeal). The patent challenge proceedings of the AIA (IPR, CBM and PGR) were specifically designed, at least in part, to remedy the pendency issue.

The new patent challenge proceedings of the AIA are conducted before the USPTO’s Patent Trial & Appeal Board (PTAB) and must conclude, by statute, within 12 months of trial order. Many districts across the country have recognized the improved speed of the PTAB. Not surprisingly, the success rate for staying cases pending USPTO review has significantly improved.
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Continue Reading District Courts Increasingly Await PTAB Decision

New Guidelines Follow Alice & Ultramercial Decisions

Today the USPTO will publish their new subject matter eligibility guidelines (35 U.S.C. § 101). A copy from the advanced reading room is available (here). While directed to examination procedures, the guidelines will  also be applicable to Inter Partes Review (IPR) and Covered Business Method (CBM) Challenge…

Multiple Factors Drive Downtrend in Amendments at PTAB

Post-issuance amendment of patents has never been popular among patentees. This is because such amendments typically trigger an intervening rights defense that bars the collection of past damages from accused infringers. That is, if the amended or new claim is not substantially identical in scope relative to a previously issued claim, potential infringers of the amended/new claims are provided with an absolute and/or equitable intervening rights defense (35 U.S.C. § 252). For this reason, historically, patentees would rarely amend claims at the USPTO that were asserted in a co-pending litigation.

This calculus changed somewhat with the introduction of the post-grant trial proceedings of the America Invents Act (AIA).

Unlike, the previous patent challenge mechanism, patent reexamination, the new administrative patentability trials are faster — much faster. This increase in speed undermines the previous “war of attrition” model. Patentees can no longer shrug off a patent challenge at the USPTO on the basis that it will never finish in time to matter. Now, at the PTAB, the choice between amending or not is effectively a choice between losing the patent altogether and living to fight another day. Moreover, with the ability to file a contingent amendment (i.e., an amendment not considered unless the original claims are deemed unpatentable) there would appear to be even more reason to “hedge” one’s bet.

For these reasons, amendment at the PTAB was sought in many of the earliest IPR filings. Since that time, however, patentees have reverted to old habits.

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Continue Reading Amendment Efforts at PTAB Trend Downward

Board Sanctions Patentee in IPR Proceedings

37 C.F.R. § 42.12 provides that the Patent Trial & Appeal Board (PTAB) the power to sanction parties. The Board  has been reluctant to officially sanction parties given the relative newness of the AIA trial proceedings. The power to sanction parties was only been even alluded to in a handful of cases — which is typically enough. To my knowledge, the Board had yet to officially sanction a party. And then last week, a Patentee came along and pretty much volunteered to be the first.

In SAP America v. Lakshmi Arunachalam (IPR2014-00413, 00414) the pro se patentee appears to have challenged the impartiality of one of the assigned Administrative Patent Judges (APJ) based upon their mutual fund holdings (presumably accessed by a FOIA filing — all PTAB judges fill out a financial disclosure form every year). In doing so, the Patentee uploaded some documents to the Patent Review Processing System (PRPS) that were not only unauthorized, but were quite offensive. Similar statements were put on a web page, along with others accusing quite a few district court and CAFC judges of similar misdeeds.
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Continue Reading PTAB Sanctions Patentee For Provocative Filings

2014 CLE Year Comes to a Close

The PatentsPostGrant.com free monthly webinar series has concluded for 2014, but will resume in January 2015. Yet, there remains at least one option for those a few credits short of their 2014 continuing legal education (CLE) requirements. Next Monday, I will host the Strafford Legal webinar entitled: Evolving PTAB Trial…

Review of PTAB Trial Orders Debated by CAFC

In recent weeks, the CAFC has twice considered whether or not the trial orders of the USPTO’s Patent Trial & Appeal Board (PTAB) become appealable once a final written decision is issued. First, on November 3, 2014, the CAFC heard arguments directed to this issue in In re Cuozzo Speed Technologies LLC. The Cuozzo appeal stemmed from the very first Inter Partes Review (IPR) ever filed. Cuozzo appealed the Board’s determination of unpatentability and argued that the IPR never should have been instituted in the first place. This past Wednesday in an appeal stemming from  the very first CBM filed, Versata Development Group v. SAP America, Inc, a similar threshold argument was made to the Court.

Can the CAFC consider an otherwise nonappealable PTAB trial order in reviewing a final written decision?
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Continue Reading CAFC Considers Justiciability of PTAB Appeal Issues