Tomorrow, July 14th, the USPTO’s Patent Trial & Appeal Board (PTAB) will host its third “Boardside Chat” lunch webinar for 2015 (postponed from June). The topic is “Discovery in AIA Trials.” I will be participating on the practitioner panel. (No CLE)
Instructions for the webinar
Yesterday, the CAFC issued its long awaited decision in the dispute between Versata and SAP (here). The appeal stemmed from the very first Covered Business Method (CBM) patent challenge proceeding. On appeal, one of Versata’s (patentee) main challenges was directed to the statutory definition of “covered business method” and “technological invention” as applied by the Patent Trial & Appeal Board (PTAB) in instituting the CBM proceeding. That is, Versata’s argued that its patent did not qualify as a CBM patent, and, therefore, the PTAB had no right to institute the review.
In rejecting Versata’s arguments, the CAFC found that the PTAB applied the appropriate definitions. All other issues were also decided against Versata, including the determination that 101 challenges were appropriate for CBM proceedings, whether or not BRI may be applied in PTAB proceedings (earlier decided in Cuozzo decision) and that the Versata patent was unpatentable as being directed to an abstract idea (price calculations). Seems the Court has become quite the “death squad” for patentee appeals, affirming the PTAB in almost all but rare exceptions.
Yet, while a loss on all fronts for Versata, on the bright side, Versata was already paid several hundred million dollars from SAP last fall — for infringing Versata’s abstract ideas.
Continue Reading CBM Patent Need Not be Directed to Financial Sector
In a close decision, the Court of Appeals for the Federal Circuit (CAFC) denied rehearing in In re Cuozzo Speed Technologies (here). At issue in the request for en banc rehearing was whether or not the Patent Trial & Appeal Board (PTAB) should apply a broadest reasonable view of challenged claims, or apply a district court style construction (Philips). The majority dismissed the argument as one of legislative policy that is beyond the power of the Court to modify. Meanwhile, the dissent argued that the “new” proceedings of the PTAB were adjudicative in nature, provided limited amendment possibility, and therefore required a claim construction consistent with that applied in the courts.
While the majority decision is short and to the point, the dissent is quite spirited.
Continue Reading PTAB’s Use of BRI Upheld …Again
With Congress headed toward a summer recess in a few weeks, it is expected that the pending patent reform bills will be front and center for July. Below is a high level overview of the PTAB proposals currently embodied in the Senate’s Patent Act” (S.1137). As previously pointed out, many of these proposals are expected to be mooted in a matter of weeks by the PTAB’s July rule package. Perhaps PTAB movement will cool the legislative appetite for these proposals, time will tell.
1. Preliminary Response – IPR
§ 313 is modified to add subsection (b), which enables a preliminary response to include affidavits/declarations of supporting evidence and opinions. In addition, a petitioner may seek leave to file a response to respond to new issues raised in the preliminary response.
(PTAB expected to propose a similar modification)
2. Institution Decision – IPR
§ 314 is modified to permit non-institution if it “would not serve the interest of justice.” Factors considered in making this decision include whether the grounds or arguments are the same or substantially the same as those considered and decided in a prior judicial or PTO proceeding and whether there is another proceeding or matter involving the same patent before the PTO.
(appears to target hedge fund filings, but PTAB is likely to take care of that problem on its own)
§ 314 is also modified to state that an IPR shall not be instituted on the basis that the evidentiary standard at the PTO differs from the one used in a court proceeding to adjudicate the claims in the petition.
(Also appears directed to hedgies/PTAB trolls that seek to re-purpose art of a litigation)
Continue Reading PTAB Cheat Sheet for Senate Bill
The Patent Trial & Appeal Board (PTAB) posed the following question to the public last summer in its Request for Comments:
Real Party in Interest:
5. Should a patent owner be able to raise a challenge regarding a real party in interest at any time during a trial?
This month the Board is expected to release a new rule package responsive to the feedback from last summer’s Request for Comments. The Rules are expected to provide some enhanced ability to secure additional discovery, especially as it relates to RPI. Given the expectation of more liberal discovery on RPI in the month’s ahead, is RPI a matter of standing that might be raised at any time, even on appeal to the CAFC?
For those seeking PTAB related CLE/updates this month, there are a few upcoming options.
First, for an update and discussion on PTAB trial practice in light of new rule changes, legislative proposals, and anticipated rules, I, along with my partner Greg Gardella, will host
Last week, the USPTO’s Patent Trial & Appeal Board (PTAB) authorized a Motion for Sanctions in four IPR proceedings filed by the now infamous Kyle Bass & friends. The motion for sanctions will be based on an alleged abuse of process by Bass & Co. for pursuing four IPR proceedings relating to Celgene patents 6,315,720 and 6,045,501. 37 C.F.R. § 42.12(a)(6) The sanction sought is termination of the proceedings. 42.12(b)(8). (motion here)
Continue Reading PTAB Considers Unplugging Hedge Fund Filings
Yesterday, in Microsoft Corp v. Proxyconn Inc. (here), the Court of Appeals for the Federal Circuit (CAFC) reversed an Inter Partes Review (IPR) determination USPTO’s Patent Trial & Appeal Board— a first. (The decision also affirmed-in-part, vacated-in-part, and remanded-in part) The Court found that the Board’s construction of several key terms to be unreasonably broad. The IPR is now remanded for further Board proceedings on a narrowed construction. In this sense, apart from historical significance, the decision is unremarkable.
Starting Friday, June 19th, the PTAB will begin a new pilot program to allow appellants with multiple ex parte appeals pending before the Board to expedite review of one appeal in return for withdrawing another appeal. The stated purpose of the Expedited Patent Appeal Pilot is to allow appellants with multiple ex parte appeals (i.e., large patent filers) pending to have greater control over the priority with which their appeals are decided and reduce the backlog of appeals pending before the Board.
Appellants wishing to participate in the pilot program
Both Houses of Congress now have bills moving to their respective floors on further patent reform thanks in large part to Kyle Bass. Of course Congress had been toying with the idea of further reform long before everyone’s favorite boogeyman came along. But now, thanks to Mr. Bass, Congress has a story to sell otherwise mind numbing legislation to the masses. Keep in mind that America Invents Act (AIA) wasn’t about patents, but job creation. Remember that? The new patent reform story, at least for the significant Bio/Pharma lobby, is this: Hedge funds are devaluing drug patents to the point that and there may not be any future, ground breaking medications —unless Congress comes to the rescue. Silly, yes, but effective for advancing otherwise stagnant legislative agendas?…you betcha.
The fact of the matter is Kyle Bass has been a boon to Bio/Pharma lobbyists. His stunts (and that’s exactly what they are) allow the debate to turn away from patent quality to one of simple gamesmanship. Everyone can rally around a perceived abuse of legal process, especially when perpetrated by a vilified outsider. But the changes contemplated in the name of stopping Mr. Bass go well beyond that which is necessary.
Continue Reading Kyle Bass: The Inconvenient Truth