The CAFC denied SAP’s request to stay the further processing of their appeal (SAP is seeking en banc review) pending rehearing of the USPTO’s Patent Trial & Appeal Board’s (PTAB) recent written decision cancelling the claims of the patent-at-issue. The simple one
Post grant patent proceedings at the USPTO are often initiated in parallel with an infringement action in the district court. Prior to September 16, 2012, when the speedier and more robust post grant options of the America Invents Act (AIA) first became available, patent challengers relied solely on patent reexamination. As patent reexamination proceedings were notoriously slow, many courts would proceed in parallel despite the conflicting actions of the USPTO that often times would tend to demonstrate the unpatentability of the disputed patent claims.
Recognizing the long pendencies of patent litigation and patent reexamination proceedings, patent challengers may file a patent reexamination as an “insurance policy” to effectively undo the effect of an interim court judgment. Over the past few years, many of these reexaminations have been making their way to the Court of Appeals of the Federal Circuit (CAFC). Back in 2012 the Court considered this practice in both In re Construction Equipment and In re Baxter. Yesterday, the Baxter dispute was again at issue, and again, Judge Newman decried the potential undermining of previously settled court rulings via USPTO decision.
Continue Reading USPTO Post Grant Patent Cancellation Trumps Court Judgment
A successful post grant patent challenge, whether it be through patent reexamination or a Patent Trial & Appeal Board (PTAB) review proceeding, does not always require a claim amendment or cancellation. In other words, even where claims are found patentable, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation may provide key evidence necessary to prevail during a Markman hearing, or offer new, non-infringement positions to defendants.
Last week, in In re Transdata, Inc. Smart MetersPatent Litigation (OKWD), the Court cited to statements made by a Patentee during patent reexamination (90/011,432) of U.S. Patent 6,181,294 that were deemed inconsistent
Continue Reading The Value of Post Grant Patent Prosecution History
Patent Holders in the business method patent space received a sobering dose of reality a few weeks back when the USPTO Patent Trial & Appeal Board (PTAB) cancelled the claims of the very first Covered Business Method (CBM) patent challenge. The petition (here) challenged U.S. Patent 6,553,350 of Versata Development Group. In May of 2011, Versata secured a $391 million dollar verdict in the Eastern District of Texas against CBM challenger SAP. Aside from the speed at which the USPTO acted on the petition, perhaps the most noteworthy aspect of the decision was the basis for the cancellation.
The PTAB expedited the typical 12 month CBM duration to 9 months since the only challenge to patentability was based on 35 U.S.C. § 101 (i.e., whether or not the claims were directed to subject matter that was eligible for patenting in the first instance). The PTAB found that the claims were not patentable under 101, and cancelled the challenged claims as being directed to an abstract idea. (Written Decision here)
The PTAB’s decision is this case was an eye opener to many business method patent litigants that had become accustomed to the “too slow to matter” world of USPTO patent reexamination. The SAP CBM decision made clear that the new post grant patent proceedings of the America Invents Act (AIA) can truly serve as a faster and cost effective alternative to patent litigation.
With the CAFC’s decision in CLS Bank v. Alice Corp (considering computer implemented business method claims) seemingly destined for Supreme Court Review, the PTAB may very quickly become the 101 court of choice going forward.
Continue Reading CLS Bank to Drive PTAB Business Method Patent Challenges?
Inter Partes Review (IPR) includes a statutory estoppel provision designed to prevent harassment of a patentee. The statute provides that an IPR challenger that fails to secure cancellation of a challenged patent claim would not only be estopped from making their failed arguments in a later litigation proceeding, but also any arguments that “reasonably could have been raised” in the IPR. The legislative history of the America Invents Act (AIA) indicates that this “reasonably could have raised” standard was fashioned to impart some degree of practicality to the scope of potential estoppel.
Patentees that later face a failed IPR challenger in a litigation proceeding will invariably seek an expansive read of the “reasonably could have raised” aspect of the estoppel provision for patent/publication based grounds of invalidity. In doing so they will seek discovery of challenger search strategies, breadth of prior art knowledge, and the relative timing of such knowledge as compared to the petition filing. In such situations the applicability of work product immunity to such pre-filing materials will be considered.
Continue Reading Work Product Immunity & PTAB Proceedings
A few weeks back House Judiciary Committee Chair Bob Goodlatte (R-VA), released a “discussion draft” of further patent reform ideas. The Draft is a collection of adjustments to the U.S. patent system designed to encourage a dialogue on these important reform issues. In particular the abusive litigation tactics of so called “patent trolls” are the driving force behind the legislative effort. For this reason, the bulk of the proposals of the Goodlatte Draft are squarely aimed at preventing the abusive behaviors and practices of patent trolls. Yet, there is one proposal of the Draft that stands out as a glaring exception. This troll-friendly provision, if enacted into law, would virtually ensure the continued success of the patent troll business model.
Continue Reading Congress Considers Helping Patent Trolls?
As discussed previously, the very first petition for a Covered Business Method Patent Challenge (CBM) was filed on September 16th by SAP (CBM2012-00001). The petition (here) challenged U.S. Patent 6,553,350 of Versata Development Group. In May of 2011, Versata secured a $391 million dollar verdict in the
The rules of the new patentability trials of the America Invents Act (AIA) are designed to ensure timely resolution within the statutorily mandated 12 month time frame. In particular, the Patent Trial & Appeal Board (PTAB) fashioned their new rules to prevent the notorious delays and complications of the previous inter partes patent reexamination system. One way in which the new AIA post grant proceedings are vastly different from the previous inter partes patent reexamination model is the manner in which claim amendments may be proposed.
In the previous inter partes reexamination system, any number of amended claims could be added or submitted prior to the close of prosecution before the examiner. There was no numerical limit on the number of claims that could be submitted. In fact, it was not uncommon practice for patentees to submit hundreds of new claims. By doing so, patentees made it more difficult for the third party to respond to all issues within their 30 day period, and within page limits. Likewise, the addition of such extensive amendments made examiner/APJ processing all the more tedious and time consuming.
In the new AIA proceedings, Inter Partes Review (IPR) and Post Grant Review, the PTAB provides for a reasonable number of substitute claims. 37 C.F.R. § 42.121/221. The “reasonable” aspect has been explained as a one-to-one correspondence in the typical case. In addition, claim amendments must be presented by motion, in a particular manner. Not surprisingly, patentees are demonstrating that old habits die hard.
Continue Reading PTAB Amendment Procedures Trip Up Patentees
For those looking for some CLE that focuses on practice before the Patent Trial & Appeal Board (PTAB), consider tomorrow’s seminar entitled: Post-Grant Patent Proceedings before the PTAB. The Strafford Legal Webinar is a 90-minute live presentation of best practices in Inter Partes Review (IPR) and Covered Business Method (CBM)
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