With the incoming Republican majority itching to make their mark, patent reform appears at the top of the legislative agenda for 2015. As discussed previously,
the interest in further reform is based more on political expediency than true need. That is, selling the American public that legislation has actually
As provided by 35 U.S.C. § 251, Patent Reissue is a mechanism by which a patent owner may correct an error in an issued patent. A proper reissue application is directed to an error that renders an issued patent wholly, or partly, inoperative. Such an error could be the mere absence of narrower dependent claims. In re Tanaka (CAFC 2011)
Although patent reissue allows for the correction of mistakes in claim scope, the proceeding is not a “do-over” of the original prosecution. For example, claim scope previously surrendered may not be “recaptured” via a broadening patent reissue. This same “public reliance” policy reasoning is utilized in other obscure aspects of patent reissue practice. For example, the Orita doctrine, prevents applicants from obtaining by reissue, claims that because of a requirement for restriction in which they had acquiesced, they could not claim in their patent. Last week, the CAFC explained yet another limitation on patent reissue practice, the “original patent” limitation of patent reissue.
Continue Reading CAFC Emphasizes Limitation on Patent Reissue Claim Scope
Since the passage of the America Invents Act (AIA) the Patent Trial & Appeal Board (PTAB) has successfully fulfilled its charge as a speedy, cost effective alternative to patent litigation. But, that is not to say that the road has been completely bump-free. As discussed previously, there has been some controversy in the early going as patentees struggle to adapt to the motion requirements necessary for amending claims before the PTAB. That is, many patentees perceive the rigid motion requirements as an unfair hurdle, justifying their criticism on the fact that the PTAB has yet to permit a contested amendment.
In response, the PTAB has gathered feedback from the interested public on motion to amend practice in a recent Federal Register Notice entitled: Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board, which included the query:
What modifications, if any, should be made to the Board’s practice regarding motions to amend?
While the USPTO has yet to issue a response to the recent feedback, it appears that the PTAB is poised to adopt the suggestion to move claims from the body of the motion, to an appendix.
Continue Reading New Representative Order on PTAB Amendment Practice
Back in July, the CAFC considered an interlocutory appeal from a denial of a motion to stay pending Patent Trial & Appeal Board (PTAB) review in VirtualAgility Inc., v. Salesforce.com Inc., et al. (EDTX). In Virtual Agility, the Court reversed the EDTX’s denial as an abuse of discretion since it seemingly held a “mini-trial” on the merits of the defendant’s CBM petition. Today, in Versata Software Inc., et al. v. Callidus Software (here), the Court considered another interlocutory appeal (unique to the CBM statute) from a decision of Judge Sue L. Robinson of the U.S. District Court for the District of Delaware.
As in Virtual Agility, the Court side-stepped the question of whether their review should be de novo under the CBM statute by finding the denial was an abuse of discretion. Yet, notably, the Court mentioned its authority to “conduct more searching review of decisions to stay pending CBM review.”
In considering the facts of Versata, the CAFC once again found the district court’s stay analysis wrong as to all of the enumerated factors of the CBM statute.
Continue Reading CAFC Again Reverses Denial of Litigation Stay Pending CBM
Post-grant, patent challenge mechanisms of the America Invents Act (AIA) continue to surge in popularity. Inter Partes Review (IPR) and Covered Business Method (CBM) patent challenges have been pouring into the Patent Trial & Appeal Board (PTAB). Last month, the Board received an astounding 195 petitions, surpassing the previous high water mark of 190 set in June of this year.
Continue Reading Record AIA Petitions Filed with PTAB in October
As discussed previously, the PTAB is experiencing a filing rate of 150+ AIA trial petitions per month (184 last month alone). This includes petitions for Inter Partes Review (IPR), Post Grant Review (PGR) and Covered Business Method challenges (CBM). The Board’s Trial Section could see between 1800- 2500 petitions this year alone — if not more as PGR ramps up. Of those filings that reach a final written decision (60% or more) it is expected that upward of 60+% of those will include a rehearing request of that decision from one side or both. That is, a significant amount of “re-work” on top of the growing AIA trial workload. Given the statutory deadline on the active docket items, which would not apply to rehearing requests of final written decisions (i.e., statutory clock stops at final written decision), these requests may see a much lower Board priority relative to the growing pile of time sensitive matters. In such a scenario, the overall pendency to a final CAFC resolution will be correspondingly extended.
The good news is that …so far…the Trial Section is outpacing historical rehearing pendencies of ex parte prosecution and reexamination appeals.
Continue Reading Impact of Requests for Rehearing on Overall IPR Pendency
As discussed on Tuesday, sometimes the Court of Appeal for the Federal Circuit (CAFC) will find it necessary to remand an appeal to the Patent Trial & Appeal Board (PTAB). Likewise, sometimes the Solicitor will seek remand in appropriate circumstances. Historically remand occurs in about 10-15% of appeals from the agency on a yearly basis (sometimes less). In any given year this meant only a handful of cases required “re-work” from the PTAB as the number of appeals from the PTAB to the CAFC was relatively modest.
Thanks to the wildly popular post-grant patent challenge mechanisms of the America Invents Act (AIA), all of that is about to change.
Back in June, the Court of Appeals for the Federal Circuit (CAFC) decided Q. I. Press Controls, B.V.,v. Quad/Tech, Inc. (here) The appeal stemmed from an inter partes reexamination of U.S. patent 6,867,423 (95/000,526). Of particular interest in the appeal from the Patent Trial & Appeal Board (PTAB) was the allowance of claims 1-60 in view of the rejection of claims 61-72. That is the Board rejected claims 61-72 on a combination of references never applied to claims 1-60, but, the allowed claims (1-60) and rejected claims (61-72) only differed in minor respects.
The PTO took issue with this aspect of the opinion. Earlier this month, the CAFC declined the PTO’s rehearing request directed to this concern.
Continue Reading CAFC Denies PTO Rehearing on New Rejection Discretion
Back in September, the Patent Trial & Appeal Board (PTAB) issued a rare expanded panel Order in Target Corp. v. Destination Maternity Corp., (IPR2014-00508) (here). In the Order, a divided panel 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). The decision was especially surprising given the fact that 315(c) had been previously interpreted by the PTAB as permitting such joinder practices. In fact, one such decision Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper 17, Dec. 21, 2012 is published on the PTO web site as a representative order.
Since the decision in Target, rehearing has been requested, and other petitioners have begun to assail the PTAB’s perceived change in course on the matter of issue joinder.
Continue Reading PTAB “Target Practice”
The PTAB is holding a two-day, all hands meeting this Tuesday and Wednesday (October 21-22). The PTAB will Webcast for the public the State-of-the-Board Address by Chief Administrative Patent Judge James Donald Smith on Tuesday morning at 10:45 – 11:15 a.m. Webcast information (here)