With two previous working drafts circulated in the House of Representatives, the proposals of the Goodlatte Bill were thought to be thoroughly “baked in” from a legislative perspective. However recent commentary from the judiciary on the proposed district court pleading/procedural changes, taken together with the very
The Patent Trial & Appeal Board (PTAB) has the power to terminate an Inter Partes Review (IPR), Post Grant Review (PGR), or Transitional Proceeding for Covered Business Method Patents (CBM) upon request of the parties. This discretionary power to terminate a patentability challenge by agreement (37 C.F.R. § 42.74) is a new concept for the USPTO. Historically reexamination proceedings could not be terminated by agreement. In reexaminations (inter partes) where the contesting parties settled their dispute, the challenging party would simply drop out of the inter partes reexamination, but the Office would continue with the reexamination in the interests of public policy. (cf. terminating an inter partes patent reexamination by operation of estoppel).
Many wondered if patentees would find value in the ability to walk away from such a public proclamations of patent weakness by agreement. For example, where a PTAB trial is ordered for IPR, three (3) technically trained judges of the PTAB will have found at least one claim reasonably likely to be unpatentable. This public record undoubtedly places a considerable “cloud” over the challenged patent.
If 2013 statistics are any indication, non-practicing entities (“trolls” to lazy typists like me) are thankful to keep their suspect patents intact as long as possible.
Continue Reading Settlement Stats Show Trolls Fleeing PTAB Patent Challenges
The CAFC first considered the validity of Baxter International’s U.S. Patent 5,247,434 (the ‘434 patent) on appeal from a patent infringement litigation with Fresenius. In that first appeal (now commonly referred to as Fresenius I), the Court found the patent not invalid over certain prior art in 2009. After Fresenius I, the litigation dispute went back to the district court on a damages related remand.
Meanwhile, in May 2012 a patent reexamination that was filed by Fresenius USA Inc. in 2007 made its way to the CAFC. The reexamination was based on much the same prior art as previously considered in Fresenius I. This time, the CAFC affirmed the determination of the BPAI that the claims were obvious over the applied prior art applying the more liberal standards for USPTO challenges. En banc review was then sought, but declined in the Baxter reexamination appeal.
Thereafter, Fresenius II made it’s way to the CAFC to determine whether the outstanding damage award was enforceable in light of the CAFC’s decision in In re Baxter. The CAFC held that as the damage award was not yet final, it was essentially erased by the cancellation of the patent in reexamination, and once again, en banc review was sought last summer.
Continue Reading CAFC Denies En Banc Review in Fresenius II
On March 28, 2013, Dominion Dealer Solutions filed 5 petitions for Inter Partes Review (IPR) against the patents of Auto Alert Inc. Dominion was sued by Auto Alert on October 1, 2012 in Central District of California for infringing 3 of the patents subject to the IPR filings (the other two IPR filings being directed to patents expected to be added to the suit).
On August 15, 2013 the Patent Trial & Appeal Board (PTAB) uncharacteristically denied all five petitions. The PTAB explained that the “real time” features of the claims had not been adequately addressed by the petitioner, or petitioner’s declarant, and that the obviousness analysis was lacking in requisite detail. In essence, the Board found that the mixing and matching of references in the claim charts (common in preliminary invalidity style charts of the district courts) was lacking in explanation as to reference interchangeability. Further the Board found the supporting declaration devoid of a developed rationale for combining the references (i.e., written in a notice style format of the district courts). Dominion sought rehearing arguing that since their declarant provided evidence that was not rebutted by the patentee, that the PTAB could not deny the petition. On October 10th the PTAB denied rehearing explaining that the declaration was indeed considered, but was found lacking in technical reasoning and substance. As the denial of an IPR petition cannot be appealed, the battle was over at the USPTO.
Days later, on October 15th, Dominion filed suit against the USPTO under the Administrative Procedure Act (APA). In their complaint (here) Dominion argues that where an IPR petition includes declaration evidence that stands unrebutted, it is arbitrary and capricious for the USPTO to deny such petitions. Yet, this evidentiary imbalance is present in virtually every PTAB preliminary proceeding by design.
Continue Reading Suit Against USPTO Urges Defacto IPR Trial Orders
As pointed out last week Japanese innovators have quickly recognized Inter Partes Review (IPR) as a cost effective tool to drive patent disputes to a timely resolution. European patent challengers have also recognized the benefits of IPR. Given the significant use of patent oppositions in Europe, the influx of
Tucked away in last week’s Federal Register Notice is a significant change to patent reexamination/supplemental examination procedures at the USPTO. Currently, any extension of time sought in an ex parte patent reexamination (the only type of patent reexamination still in existence) requires a show
Although the Innovation Act (H.R.. 3309) was only introduced last week, as expected, Congress is wasting no time pushing the “patent reform” issue forward. Today at 10AM the House Judiciary Committee will hold a hearing on the content of the Bill entitled: Improving the Patent System to Promote American Innovation and Competitiveness. The hearing will alert the committee of specific concerns prior to mark-up. One notable topic is the Bill’s proposed shift from the broadest reasonable interpretation (BRI) at the USPTO’s Patent Trial & Appeal Board (PTAB) to a district court style claim construction. The initial draft of the Goodlatte Bill referenced the entirety of 35 U.S.C. § 282, and along with it, a presumption that patent claims are valid (§ 282 (a)). This would have been an absolute boon to patent trolls. Fortunately, and as I predicted, the claim construction proposal no longer requires the application of the presumption of validity.
In the second draft, and now H.R. 3309, the general reference to § 282 has been changed to a contextual reference to § 282(b). In essence, the proposal would change little at the USPTO (plain and ordinary meaning is a component of BRI) other than perhaps an increased emphasis on prosecution history consistent with Philipps v. AWH. That said, the proposal still lacks consistency and leaves a possible opening for patent troll mischief.
Continue Reading Congress Debates USPTO Use of District Court Claim Construction Practices
Generally speaking, inter partes patent reexamination was pursued relatively infrequently by foreign based entities. Unlike their U.S. based counterparts, foreign based companies rarely employed patent reexamination as a tool to resolve patent disputes in a more cost effective manner, and/or to pressure opponents in a parallel litigation. This phenomena was especially odd for Japanese innovators. This is because many of the top ten patent filers are Japanese companies. Clearly these companies were familiar with USPTO proceedings, but remained uncomfortable with the USPTO as a source of potential resolution for patent validity disputes.
Since the passage of the new patentability challenges of the America Invents Act (AIA), the public has overwhelmingly embraced Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings as a viable option to traditional patent limitation—and, unlike inter partes patent reexamination, Japanese innovators are not far behind.
Continue Reading Japanese Innovators Begin to Embrace PTAB Challenges for Patent Dispute Resolution
Now that Congress has kicked the budgetary can down the road for another 3 months they may actually squeeze in some lawmaking before the end of 2013. Given the public image problems created by the shutdown of the last few weeks, lawmakers will be eager to find an issue to address via legislation; especially an issue with bipartisan support that will not be too hotly debated— You see where this is going.
Given the the entrenched positions on both sides of the immigration debate (a stated priority of the White House), patent reform remains the lowest hanging fruit. For this reason it seems likely that the next act of political theater will be to sell patent reform as key to America’s competitive future. As a reminder, here are the issues to shape the debate in the week’s ahead:
Continue Reading End of Budget Deadlock to Spark Patent Reform Efforts?
For those seeking CLE in the coming weeks, the following programs cover post grant topics. First, TechTransferCentral.com offers “Patent “Trolls” Under Fire: Strategies Tactics & Legislation Impacting University Patents and Licensing” on October 22nd 1-2PM (webinar). Next, on Thursday, October 24th the AIPLA Annual Meeting includes: Post-Grant Challenges Strategy &