Non-registered practitioners may, in limited circumstances, be permitted to appear before the Patent Trial & Appeal Board (PTAB) on a pro hac vice basis. 37 C.F.R § 42.10(c). Previously, in IPR (IPR2013-00010) (order here), the requirements for the motion and accompanying declaration were outlined.
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Patent indemnification provisions are a fixture of modern contractual agreements for the exchange of technological goods. The indemnification clause, whether express or introduced by default via the Uniform Commercial Code (UCC), essentially warrants that the contracted goods are free from claims of patent infringement. In the event of a claim of patent infringement, the indemnity clause obligates the Seller/Supplier to defend against the claim in some manner, typically funding the defense, or taking over responsibility for the defense effort.
While the body of law pertaining to contractual interpretation has remained largely unchanged in recent years, the passage of the America Invents Act (AIA) has altered the landscape as to patent defense practices. In particular, the battle against the dreaded patent troll has shifted more toward the post grant patent challenge proceedings of the Patent Trial & Appeal Board (PTAB). Since many multi-defendant disputes are shifting to the PTAB for resolution it is imperative that indemnitors account for this eventuality in their contractual agreements.
Continue Reading Recalibrating Indemnity Obligations To Account for New Post Grant Patent Realities
Petitioners seeking Inter Partes Review (IPR) must be mindful of the statutory bar of 35 U.S.C. § 315(b). This provision precludes IPR on any patent once 12 months have elapsed after service of a complaint alleging infringement of that patent. The rationale for the statutory bar of 315(b) is straightforward. That is, IPR was designed to be a true alternative to patent litigation, not an adjunct process that was typical of the inter partes patent reexamination proceeding it replaced. By mandating that an IPR filing be brought earlier in the litigation timeline, Congress hoped to avoid duplicative proceedings, avoid patentee harassment, and enhance the ability of the Patent Trial & Appeal Board (PTAB) to provide a timely resolution to such business disputes.
315(b) went into effect on September 16, 2012. As written, the statute was understood to be retroactive, and immediately foreclosed IPR as an option for many late stage litigants. For this reason, there was an unprecedented surge of inter partes patent reexamination filings in the weeks leading up to September 16, 2012. Still, there were some open questions as to the flexibility of the 12 month window. How would repeated assertions of the same patent be treated by the PTAB, did the window reset? What about patents that had been reexamined and included new claims?
Continue Reading Does the 12 Month IPR Window Ever Reset?
For those seeking CLE next week, 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 up, on October 24th comes the AIPLA Annual Meeting, which includes the Thursday morning
Under the old inter partes patent reexamination model, patentees were often faced with 10+ grounds of rejection. The numerosity and overlap in these rejections rendered USPTO processing quite tedious and resource intensive. For at least this reason these proceedings would take upward of five years to make their way through the USPTO.
With the inefficiencies of inter partes patent reexamination still fresh on the minds of the Patent Trial & Appeal Board (PTAB), it is not surprising that the Board has attempted to simplify such issues for Inter Partes Review (IPR) and Covered Business Method (CBM) patent challenges (and presumably PGR). In the PTAB Trial Orders to date, grounds of unpatentability that are deemed “redundant” are filtered out at the close of the preliminary proceeding and trial is ordered going forward on the strongest grounds (as determined by the panel of PTAB judges). However, in view of the recent CAFC decision in Rexnord Industries LLC. v. Kappos (CAFC 2013), this redundancy determination may only serve as a temporary reprieve for patentees.
Continue Reading PTAB Redundant Grounds of Unpatentability To Come Back From the Dead?
Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings of the Patent Trial & Appeal Board (PTAB) begin with a Trial Order that includes substantial guidance on matters of claim construction. Typically, key terms at issue in the proceeding are expressly construed by the panel of administrative patent judges (APJs). While such constructions are not binding per se on a parallel litigation proceeding, in some circumstances such findings can be nevertheless devastating to a litigation campaign, and, disruptive at a far earlier date than a typical Markman Order.
For example, in many cases involving non-practicing entities (NPE), an overly broad claim construction is advanced for the purpose of capturing the products/processes of an entire industry. At the PTAB, the broadest reasonable interpretation is applied. Naturally, if the PTAB does not agree with the NPEs claim interpretation some 5-6 months after petition filing, such is strong evidence that the plaintiff’s case will not go according to plan. In fact, the CAFC has found interpretations of the USPTO in this context to be persuasive evidence. See St. Clair Intellectual Property Consultants, Inc. v. Canon Inc., (Fed. Cir. 2011, non-precedential)
In other contexts, where the claim interpretation analysis is more akin to a district court analysis, such as in an expired patent or means-plus-function claim, the PTAB Trial Order can arguably supplant a Markman analysis.
Continue Reading Early PTAB Claim Construction — The Faster, Cheaper Markman Order
With many government agencies shutting down all but the most essential operations today, including the International Trade Commission (ITC), the USPTO remains open. With roughly 4 weeks of funding available, the USPTO expects to maintain operational status. Likewise, the Court of Appeals for the Federal Circuit (CAFC) appears
Some notable pre-grant news this week. A Request for Continued Examination (RCE) is largely a procedural creature of pre-grant, patent application prosecution (patent reissue being the lone exception on the post grant side). Recently, the backlog of RCE filings has increased significantly. This is largely
As expected, the second Goodlatte discussion draft has been circulated. (here) The second draft appears to include additional technical fixs and refinements, including the necessary CBM fix I mentioned being involved with yesterday. The draft also includes many of the concepts introduced in
In fashioning the Covered Business Method (CBM) statutes of the America Invents Act (AIA), Congress was sensitive to the resources of the USPTO. That is, Congress realized that certain types of “secret prior art” would be very discovery intensive to analyze within the mandated 12 month time frame that the USPTO must conclude a CBM proceeding. An example of such art would be secret public use of a claimed method that predated a patent filing, such as described in Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. 153 F. 2d 516 (CA2 1946). To avoid this type of discovery intensive prior art being applied in CBM proceeding, Congress excluded it under the definition of prior art provided in Section 18(C) of the AIA.
The problem with Section 18 (C) is that its definition of prior art inadvertently excluded 102(e).
Continue Reading The Statutory Defect That May Doom Your CBM Petition