As we approach the witching hour of mid-term elections, Congress begins to turn back to the business of law making. With so few legislative initiatives having meaningful bipartisan support, and a lame duck executive eager to appear — well, not so lame, patent reform offers political opportunity.
Something wicked this way comes.
Continue Reading Renewed Patent Reform Chatter, Why?
The extended deadline for responding to the June 27, 2014 Federal Register Notice entitled: Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board expires tomorrow, October 16th. The USPTO published the request for comments to gather commentary on all aspects
In a strange twist, an unsuccessful IPR petitioner is currently urging the CAFC to adopt an expansive interpretation of statutory estoppel for Inter Partes Review (IPR). That is, the petitioner argues where only a subset of claims challenged in an IPR petition are actually instituted for trial, the Patent Trial & Appeal Board (PTAB) should nonetheless carry non-instituted claims through trial to the final written decision. In such a case, estoppel would necessarily attach to the non-instituted claims by virtue of their inclusion in the written decision. 35 U.S.C. § 315(e)
Why on earth would a petitioner argue for such a thing?
Continue Reading Statutory Estoppel For IPR Petition Misses?
The Patent Trial & Appeal Board (PTAB) has announced Detroit Region Roadshows from November 5-19, 2014, focused on the AIA trials. The PTAB will visit Detroit, Chicago, Pittsburgh, Cleveland, Minneapolis, and Milwaukee for half-day, afternoon programs.
The roadshows are designed to be interactive, including audience participation in an educational game show (which couldn’t possibly be any geekier unless they required everyone to dress in Star Wars costumes) as well as a hands-on workshop.
Continue Reading PTAB Announces Mid-West Roadshow
With two full years of Inter Partes Review (IPR) proceedings on the books, we now have an adequate sample of decisions—158 through 9/26/14. While most IPR decisions are still pending appeal, the results are consistent with earlier inter partes reexamination outcomes.
As of September 2013, 696 inter partes reexamination certificates had been issued. (Not even half of the 1919 such proceedings pursued over the thirteen year history of the now defunct, never ending, reexamination option).
Continue Reading IPR Final Decisions Track Reexamination Outcomes
Last Friday, the Patent Trial & Appeal Board (PTAB) designated seven informational decisions. In each decision, the Office denied institution of an inter partes review (IPR) under 35 U.S.C. § 325(d). This statute permits the Director to take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. The new informative decisions are:
These decisions demonstrate
Yesterday, 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 is especially surprising given the fact that 315(c) has been interpreted by the PTAB as permitting such joinder practices to date.
The Order is not designated precedential, or even informative — for this reason, it is especially troubling. Such a deeply divided panel of well respected APJs potentially tarnishes the Board’s reputation with the public as a predictable and consistent forum. This is because it may foster the perception that panel assignment may be outcome determinative. Moreover, if the majority view is adopted it could increase litigation gamemanship known to frustrate the ability of patent challengers to effectively utilize the PTAB.
Continue Reading PTAB Divided Over Practice of Issue Joinder
Yesterday, the USPTO announced the appointments of Judge Scott Boalick to the position of Vice Chief Administrative Patent Judge and Adam Ramsey to the position of Board Executive.
Judge Boalick had been acting Vice Chief for the past year, this appointment simply formalizes that role. As Board Executive, Mr. Ramsey will be
Is Patentee Evidence Too Much Additional Work for the Board?
As discussed previously, the USPTO has issued a Request for Information (RFI) entitled, Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board. The RFI poses 17 questions, two of which were addressed in previous posts. Namely: Is there any circumstance where a broadest reasonable claim interpretation (BRI) should not be used for an unexpired patent? (here); and, Should any changes be made to motion to amend practice? (here)
Next up is the third query of the list:
3. Should new testimonial evidence be permitted in a Patent Owner Preliminary Response? If new testimonial evidence is permitted, how can the Board meet the statutory deadline to determine whether to institute a proceeding while ensuring fair treatment of all parties?
Continue Reading PTAB to Permit New Evidence with Preliminary Responses?
The obviousness of a claimed invention is assessed from the perspective of a hypothetical person of ordinary skill in the art (POSITA). For this reason, the degree of skill present in a given art is often contested by parties to a patent litigation. Often times, patent challengers assert a higher level of skill, which favors an obviousness determination. Conversely, patentees advance a lesser level of skill, militating in favor of patent validity. Yet, outside of highly specialized fields, such disputes are of rare consequence in the predictable arts.
The USPTO’s Patent Trial & Appeal Board (PTAB) rarely pronounces a precise level of skill, instead relying on In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board did not err in adopting the approach that the level of skill in the art was best determined by references of record). Given this, patent challengers in the predictable art rarely give much thought to advancing a precise level of skill in their post-grant challenges.
As made clear last week by the Court of Appeals for the Federal Circuit (CAFC), setting the level of skill could be especially important for art subject to a non-analogous art attack.
Continue Reading Anticipating Non-Analogous Art Arguments at the PTAB