Amendment

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Agency Still Responding to Criticism on Amendment Difficulty

A constant criticism of the Patent Trial & Appeal Board (PTAB) has been the perceived difficulty in amending claims in an AIA trial proceeding. In response, the PTAB has pointed out that the vast majority of motions to amendment fail to distinguish over the art of record.  That is, the Board is not applying Draconian procedural requirements. Rather, in my experience, Patent Owners are attempting to skirt an intervening rights defense with a cosmetic change, or seeking to maintain their infringement case with an incremental change in claim scope.  Such amendments routinely fail to clear the art of record (or supplemental art that is easily located). Not appreciating the real-life practicalities of amendment practice, many critics hoped that the shift in burden post Aqua Products would now favor amendments. While there has been a slight uptick for 2018, as expected, Aqua Products is not moving the needle.

Recent stats from the PTAB demonstrate that while amendment is being attempted slightly more often post-Aqua, the outcomes are no more favorable to Patent Owners.
Continue Reading Amendments at the PTAB Hamstrung by Litigation Realities

Aqua Products Results in De-designation of Previous Amendment Precedent

In view of the decision from the United States Court of Appeals for the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), regarding motion to amend practice and procedure in AIA trials, the Patent Trial & Appeal Board (PTAB) has…

Pro-Patent Owner Options

The new Director of the U.S. Patent & Trademark Office (USPTO) has issued a Notice of Proposed Rulemaking (NPRM) in record time. With only a few weeks on the job, the Director issued a NPRM to switch the Broadest Reasonable Interpretation (BRI) currently used in Patent Trial & Appeal Board (PTAB) trial proceedings to a Phillips claim construction. The proposal was quickly lauded by Patent Owners believing that the application of the Phillips standard by the PTAB will lead to narrower claim constructions, and thus, more patents being upheld by the agency. But, as I pointed out previously, in practice, BRI is rarely different from a Phillips construction. In fact, utilizing the same standard at the PTAB as in the courts might only make matters worse for Patent Owners from a monetization perspective.

Impact of the proposed claim construction change aside, the speed at which the Director has acted speaks to his keen interest in improving the PTAB playing field for Patent Owners. With the Director expected to issue further proposals to aid Patent Owners, below are some likely candidates.
Continue Reading How Might the Director Improve the PTAB for Patent Owners?