The USPTO published a notice of proposed rulemaking in the Federal Register on August 20, 2015, seeking public comment on proposed amendments to the rules of practice for trials before the Patent Trial and Appeal Board. See Amendments to the Rules of Practice for Trials Before the Patent
Next Monday and Tuesday, the 15th Annual Sedona Conference on Patent Litigation will be held in Reston Virginia. This two-day event includes a variety of noteworthy topics, PTAB topics include: The Inter Partes Review (IPR) process: purpose, standing, 1 year time bar, assignor estoppel; Is the IPR process too restrictive
In Target Corp. v. Destination Maternity Corp (IPR2014-00508), the Board departed from previous PTAB practice on issue joinder for the first time. That is, up until Target, a same petitioner was able to join a first-filed petition with a later filed, second petition (i.e., “issue joinder). The first Target decision determined that issue joinder was outside of the statutory authority granted by 35 U.S.C. § 315(c). cf. Microsoft Corp. v. Proxyconn, Inc., (IPR2013-00109, Feb. 25, 2013). Thereafter, an expanded, but divided, panel, reversed, that finding on rehearing. Since that time, as the ultimate decision in Target was not precedential, the question of whether or not issue joinder is permitted by statute has become panel dependent.
Now, based upon a recent decision of the Board (which tracks a recent brief filed by the USPTO with the CAFC), it appears the Board is moving toward a more consistent policy of accepting issue joinder.
Continue Reading PTAB Moves Toward Consistency on Question of Issue Joinder
Today, in IPR2015-00988, the Patent Trial & Appeal Board (PTAB) instituted review of Cosmo Technologies patent 7,773,720. The patent is directed to controlled release oral pharmaceutical compositions containing 5-amino salicylic acid, also known as mesalazine or 5-ASA, as an active ingredient. Mesalazine is used to treat Crohn’s
This Thursday October 8th, I, along with former USPTO Commissioner for Patents Peggy Focarino, will host the Strafford Legal webinar Proactive Patent Procurement and Prosecution Strategies: Minimizing the Threat of Post-Grant Challenges. The program will assess the changing assertion and procurement landscapes with a particular focus on strategies that
Two weeks back, the USPTO provided a report to Congress on the implementation of the America Invents Act (AIA) (as required by the legislation). The 65 page report (here) explains the administrative effort to implement the mechanisms of the AIA, as well as four years of statistics. Of particular interest to me are the recommendations to Congress on adjusting IPR/PGR mechanisms, as well as some of the statistics on such procedures as third party submissions and (the all but forgotten) supplemental examination.
Continue Reading USPTO Recommends PTAB Changes to Congress in AIA Report
Back in July, the Court of Appeal for the Federal Circuit (CAFC) determined that a question of CBM eligibility was excepted from the appellate review bar for PTAB institution determinations. The exception for CBM eligibility was found because this question pertains to the PTAB’s “ultimate authority to invalidate.” Versata Dev. Grp., Inc. v. SAP America, Inc. 793 F.3d 1306 (Fed. Cir. 2015). Since the Versata decision, subsequent appeals from the PTAB have probed the boundaries of the exception for other “standing” type issues.
In Achates Reference Publishing Inc. v. Apple Inc., decided yesterday (here), the question presented to the Court was whether or not the petitioner time bar to IPR (35 U.S.C. § 315 (b), i.e.,12 month widow) was an issue of the PTAB’s “ultimate authority to invalidate.”
Continue Reading CAFC Finds 315(b) Bar to IPR Not Reviewable on Merits Appeal
Last year, I pointed out that the Central Reexamination Unit (CRU) had extra capacity since inter partes patent reexamination filings were abolished with the passage of the America Invents ACT (AIA) . And, given the adjudicatory mission of the Patent Trial & Appeal Board (PTAB), and the examination depth of the CRU, I recommended that perhaps there could be some joint cooperation between the entities to more effectively review amendments submitted in AIA trial proceedings. Specifically, I envisioned a “Motion to Reissue” that would extend the PTAB 12 month trial schedule another 6 months to allow for a truncated reissue proceeding. This reissue phase would be performed by the CRU with results returned to the PTAB within the 18 month trial schedule. In that same post, I recommended some other changes to the motion to amend process such as allowing claims be submitted in an appendix (since adopted by the Board) and a change to Rule 42.73(d)(3).
Continue Reading Senate Proposes to Add Examiners to PTAB Amendment Process
While all hedge fund filings considered by the PTAB to date have failed on the merits (Kyle Bass is 0-3 & Ferrum Ferro Capital 0-1), today, the Board declined to outlaw such filings as a matter of policy. In IPR2015-01092, 1096, 1002, and 1103, Patentee Celgene filed Motion for Sanctions against the Coalition for Affordable Drugs. Celgene sought termination of the IPRs on the basis that the use of the IPR mechanism for pure financial gain (short selling and other investment strategy) was repugnant to the Congressional intent for this alternative to patent litigation. Decisions on the merits of the Celgene petitions remain outstanding.
Continue Reading PTAB Denies Sanctions in Hedge Fund Filings
Both patentees and challengers alike were displeased with inter partes patent reexamination prior to the America Invents Act (AIA). Inter partes patent reexamination was too slow to serve as a true alternative to litigation for patent challengers, and patentees argued the system was biased against them. In formulating the AIA Congress fashioned a replacement, Inter Partes Review (IPR). The IPR statutes, not surprisingly, mandate speed, and include mechanisms directed to the perceived lack of fairness of the old reexamination model.
Yet, even with the added IPR mechanisms, patentees are not faring much better as compared to the days of inter partes patent reexamination. As a result, patentees have lobbied for further changes. These changes, some of which are now proposed as formal rule changes by Patent Trial & Appeal Board (PTAB) may only make matters worse for some patentees.
Continue Reading Proposed PTAB Rule Change May Backfire on Some Patentees