Tomorrow, May 25, 2017, I will present a webinar for Strafford Legal on: Evolving PTAB Trial Practice: Navigating Complex Procedural Rules (live webinar: 1:00PM-2:30PM EDT)
The program will cover a number of important topics, not the least of which is the expected impact of pending
IPR estoppel is established under 35 U.S.C. § 315(e)(2), which provides that “the petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . may not assert . . . in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” (emphasis added).
As previously discussed, IPR estoppel has been unnecessarily complicated by the PTAB’s redundancy practice as discussed in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016
For example, the district court in Intellectual Ventures I LLC v. Toshiba Corp., Civ. No. 13-453, explained that, based on Shaw, it was necessary to interpret the scope of estoppel very narrowly, only applying estoppel to prior art or publications actually instituted in the IPR. As this decision contradicts the plain language of the estoppel statute, it has been heavily criticized as too literal a reading of Shaw. More recently, several other district courts have taken a more expansive view of Shaw. But, in my opinion the first district to actually get it right, is, surprisingly, this week’s venue whipping boy— the Eastern District of Texas (EDTX).
Continue Reading PTAB Trial Estoppel Demystified in EDTX?
Today, the Supreme Court granted certiorari in SAS Institute Inc., v. ComplemenSoft LLC. As previously explained, SAS argues that partial PTAB trial institutions are inconsistent with the controlling statutes of the America Invents Act (AIA). That is, if the PTAB finds that at least one claim is demonstrated as likely unpatentable, the PTAB should institute trial for all petitioned claims.
The dispute stems from an IPR filing of SAS in which it challenged all sixteen claims of ComplementSoft’s 7,110,936 patent. Trial was instituted for claims 1 and 3-10, but claims 2 and 11-16 were denied institution. On appeal to the Federal Circuit, SAS argued that it was inefficient to institute on only a subset of claims, and that the controlling rule authorizing partial institution (37 C.F.R. § 42.108(a) was in direct conflict with statutes 35 U.S.C. §§ 314(a)/318(a). The Federal Circuit disagreed.
Setting aside for another day the academic debate on the merits, should the high court accept SAS’s argument, Patentees will be significantly prejudiced.
Continue Reading Eliminating Partial PTAB Institutions Will Undermine Trial Practice
We all remember the “Great BRI Debate” that was Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2143–44 (2016). PTAB critics argued that the Board’s “broadest” claim construction rubric was unfairly stretching claims to embrace prior art — resulting in inevitable invalidity determinations. And that since the PTAB was now in the business of litigation, they must follow litigation claim construction practices deemed more favorable to patent holders (especially since the PTAB amendment process, the justification for BRI, was argued as illusory).
In reality, the difference between BRI and the district court Philips practices is the label used to reference each. Both constructions apply the ordinary and customary meaning of a claim term at the time of the invention from the perspective of one of skill in the art. The difference in outcomes is a simple reflection of expert agency’s technical insight, not a meaningful difference in claim construction frameworks. For this reason, and many others, Cuozzo failed.
Attempts to derail PTAB trial proceedings still persist some 5 years into its life. These attempts now include recycling failed constitutional arguments against Article I adjudication practices.
Continue Reading Constitutional Challenges to PTAB Another Dead End
May 16, 2017:
In today’s en banc argument (audio here) the Federal Circuit considered the whether it should overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) and hold that judicial review is available for a patent owner
Critics of the Patent Trial & Appeal Board (PTAB) are not hard to find — attorneys especially hate change. Since the start of AIA trial proceedings in 2012, we have seen a never ending stream of challenges to these proceedings as “unfair,” “unconstitutional,” “violating due process,” and employing the “wrong litigation standards.” All of these challenges failed at either the Federal Circuit, Supreme Court, or both. (not at all surprisingly, given similar challenges to the patent reexamination system decades earlier)
Perhaps as a result of the failed judicial challenges, criticism of the agency has now turned far more virulent and personal.
Continue Reading Ethical Guidelines for PTAB Judges
The chatter around the USPTO’s Alexandria campus is the ongoing efforts of the Secretary of Commerce, Wilbur Ross, to select a new USPTO Director. With interviews progressing, some of the bigger names have seemingly fallen out of the picture. The focus appears to have shifted to attorneys in
It is not uncommon for an AIA Trial Proceeding, such as Inter Partes Review (IPR), to be instituted on a subset of unpatentability grounds presented in the petition. For example, IPR is currently granted on a claim-by-claim basis. That is, petition grounds can be accepted or denied based upon the Patent Trial & Appeal Board’s (PTAB) conclusions as to whether a reasonable likelihood of prevailing is shown for a given patent claim.
Continue Reading Denied Petition Grounds May Be Relevant to PTAB Trial
Patent challenge proceedings of the USPTO’s Patent Trial & Appeal Board (PTAB) are designed to provide a low cost, expedited option to district court litigation. Of course, if a patent challenger is unsuccessful at the PTAB, the district court or International Trade Commission (ITC) is left to make the ultimate resolution on validity. Yet, as I discussed last year, closed AIA trial records are being leveraged by the courts to aid in resolving a number of disputed issues — from claim construction to summary judgement invalidity determinations.
More recently, the International Trade Commission (ITC) has followed suit.
Continue Reading ITC Shows Interest in PTAB Record