WiFi One Opens the Door to Reconsideration of Well-Established PTAB Precedent

The Federal Circuit’s softening of the appeal bar (35 U.S.C. § 314(d)) in WiFi One will now allow the Court to consider matters unrelated to the merits of an institution decision, and in some cases, well-established precedent of the Patent Trial & Appeal Board (PTAB).

For example, in Oracle Corp. v. Click-to-Call Techs. LP Case IPR2013-00312, Paper 26 (Oct. 30, 2013), Section (III.A) was designated precedential.  This section explains that the dismissal of a lawsuit “without prejudice” nullifies the service of the complaint relative to 35 U.S.C. § 315(b).  The Federal Circuit announced last Friday that it can now consider this precedent, post WiFi One.

Continue Reading CAFC to Consider Popular IPR Time Bar Exception

January Webinar to Focus on PTAB Appeals to the CAFC

This month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday January 31st @ 2PM (EST). The January Webinar is entitled: Building Winning PTAB Appeals to the Federal Circuit. With the Federal Circuit’s affirmance rate for PTAB appeals hovering at around 70%, and with such appeals approaching 50% of the Federal Circuit’s docket, successful appellate advocates must not only stand out from the crowd, but build winning trial records from Day 1. This task is easier said than done with the accelerated pace of PTAB trials, limited discovery, and recent recalibration of the appeal bar in Wi-Fi One v. Broadcom.

The January PatentsPostgrant.com webinar is presented by R&G PTAB Practice Chair Scott McKeown & Appellate/Supreme Court Practice Chair Douglas Hallward-Driemeier who will offer their insights and experiences in  building winning PTAB appeals to the Federal Circuit. Register (here)

The formal portion of the webinar will begin at 2PM Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period. To attend the webinar please sign up via the link above. You will receive a registration confirmation email immediately. Two hours prior to the webinar you’ll receive another email with a link and instructions for joining the presentation. CLE credit will be provided (CA, NYC, VA).

WiFi One Touchstone: Closely Related to Patentability Determination?

As I predicted would happen last Spring, the Court held today in Wi-Fi One v. Broadcom (here) that the appeal bar is limited to Director determinations closely related to the preliminary patentability determination, or the exercise of discretion not to institute. As such, questions that may be fully and finally decided before a trial on the merits, such as 315(b), are no longer barred from appeal. Continue Reading CAFC Softens PTAB Appeal Bar

Standard Operating Procedures (SOP) 9 Released

As discussed last week, a remand to the Patent Trial & Appeal Board (PTAB) may be a short-lived victory for Patent Owners.

The PTAB has now officially revised the “Standard Operating Procedure 9 (SOP9)” directed to default procedures for cases remanded from the Federal Circuit.

Some highlights:

  • PTAB has set a goal of issuing remand decisions within 6 months of the Federal Circuit’s mandate.
  • Panels will now meet with the Chief, Deputy Chief, or their delegates (i.e., one of the Vice Chief Judges) to discuss the remanded case and issues presented therein.
  • PTAB has set forth default procedures for trials and appeals regarding whether further briefing, evidence, or oral hearings are warranted in individual case and whether prosecution will be reopened.

For more details, please read the revised SOP 9 (here).

Remand or Reversal?

Appeals from the Patent Trial & Appeal Board (PTAB) have now become a major component of the Federal Circuit’s docket. Given the deferential “substantial evidence” standard accorded PTAB decisions, upward of 60% of such appeals are simply affirmed — many without further comment. The remainder of PTAB appeals  include a mixed bag of partial affirmances, reversal and/or remands. While both reversal and remand outcomes are appellate “wins” for Patent Owners, a remand for a Patent Owner is often a winning of the Federal Circuit appeal battle only to lose the PTAB war. Continue Reading PTAB Revisited: Avoiding Federal Circuit Remands

PTAB Precedent (Not Surprisingly) Embraces CAFC Precedent

As I pointed out last week, it is a heavy lift for the Patent Trial & Appeal Board (PTAB) to designate a precedential decision.  For this reason, nothing but the most straightforward of issues can be decided and designated “precedential.”

The PTAB issued a prime example of a seemingly straightforward precedential decision a few days ago in Ex parte McAward, Appeal 2015-006416 (PTAB Aug. 25, 2017), Section I.B. (here). This PTAB precedent makes clear that the USPTO assesses indefiniteness pursuant to the Federal Circuit’s guidance in In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).

While some have expressed shock at the PTAB pronouncing a different standard than that expressed in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), this is just a restatement of the Board’s status quo since the Packard decision. (It is not exactly shocking that the Board is following the guidance of its reviewing court).

The more interesting issue is whether the Court’s reasoning in Packard is equally applicable to AIA trial proceedings? Continue Reading New PTAB Precedent Endorses In re Packard….But For How Long?

Preserving The PTAB Trial Record

An objection operates to preserve errors in admitting evidence. At the PTAB, the manner and timing of making evidentiary objections is governed by agency rule rather than the Federal Rules of Evidence (FRE). 37 C.F.R. § 42.64.  An Offer of Proof, on the other hand, preserves errors in excluding evidence. But, to date, Offers of Proof have not been a recognized mechanism of PTAB trials — not formally anyway.  This is despite the fact that there is no agency rule on point to displace FRE 103, and the FRE apply to PTAB trials. 37 C.F.R.§ 42.64.

That is not to say that PTAB litigants are unable to otherwise preserve the record when evidence is denied entry, or that the need to preserve such is anywhere near as pronounced as compared to the district court. Only that PTAB litigants may have to work a little harder to preserve such issues for appeal. Continue Reading PTAB Offers of Proof?

Functional Aspect of Structural Term Overlooked

Yesterday, in Power Integrations, Inc., v. Lee (CAFC 2015) the Court considered the rejection of claims 1, and 17-19 of  U.S Patent 6,249,876. Reexamination of the ‘876 patent was initiated by the USPTO in 2006 at the request of Fairchild Semiconductor. At issue in the reexamination (and in a parallel infringement action) was the meaning of the claim terminology  “coupled to.” The Patentee insisted that this terminology had both a functional and structural meaning. On appeal to the Board of Patent Appeals and Interferences (BPAI — Now the PTAB), affirmed the examiner’s rejection of the claims. In doing so, the Board appeared to focus only on the structural aspect of the disputed claim terminology.

The CAFC reversed and remanded finding that the Board’s focus on the structural aspects of the disputed claim terminology to be “red herring.”  
The Board stated that Patentee “appear[ed] to argue that one of ordinary skill in the art would understand the term ‘coupled to’ to restrict device connections to exclude intervening components.”  The Board concluded, however, that the term meant simply to “join[] devices into a single circuit,” and did not preclude the presence of intervening components.  In addition, the Board rejected Patente’s argument “that the respective counters in [the cited art] are not coupled to the respective digital to analog converters because all [have intervening components]  Patentee requested the Board’s reconsideration prior to appeal to the CAFC. Patentee asserted the Board misapprehended their argument regarding their construction of “coupled to” explaining that it had never contended that the term precluded the presence of intermediate circuit elements between the counter and the digital to analog converter.  The Board denied rehearing and dismissed Patentee’s argument

The CAFC noted that Patentee had consistently argued before every tribunal that claim 1, when read in light of the specification and surrounding claim language, requires that the counter itself – not an intervening element – control the digital to analog converter’s output to vary the switching frequency. The Court described the Board’s structural focus to be a red herring, and opined that it failed to adequately evaluate Patentee’s  primary argument (i.e., the aforementioned control aspect).

The Court reminded the Board that while the district court claim construction was not binding on it, full consideration of the earlier construction may have proved enlightening. That is, the Court felt “the board had an obligation, in these circumstances, to evaluate that [district court] construction and determine whether it was consistent with the broadest reasonable construction of the term.” However, the court expressly noted they were not creating a new requirement that the Board must in all cases assess a previous judicial interpretation of a disputed claim term. Rather, the court remanded the case so that the Board may fully assess the functional aspect of the claim and set forth its “reasoning in sufficient detail to permit meaningful appellate review.”

How Patentee will fare on remand remains to be seen. The Court mentions that the Solicitor briefing provided an alternative explanation to affirm that the Board may simply adopt on remand. 

While it is one thing to say that the Board did not fully address the functional issue, “coupled to” would not seem to denote exclusive control on its own. Also, had the litigation construction not been before the Court in 2013, it is not clear that the Court would have faulted the Board’s analysis. The takeaway here is to clearly present all arguments to the Board.

Upcoming PTAB Programs

The USPTO’s Patent Trial & Appeal Board (PTAB) will host a “Boardside Chat” lunch webinar tomorrow, April 7th. This month’s chat will focus on “Do’s and Dont’s of Ex Parte Appeals.”  The bi-monthly chat program updates the public on current Board activities and initiatives. Tomorrow’s dial-in is as follows:

Webinar Access Information:
Event address: uspto-events.webex.com/uspto-events/onstage/g.php?MTID=ee4b8faff5a188332aaa6a752f4b6c292
Event number: 994 593 512
Event password: 123456
Audio conference: Call-in toll number is 1-650-479-3208, access code is 994 593 512

The schedule of topics through October is listed below.





Tuesday, April 7

Noon to 1PM (EST)

Do’s and Don’ts for Ex Parte Appeals

Panel of Administrative Patent Judges

Tuesday, June 2

Discovery in AIA Trials

Panel of Practitioners and Administrative Patent Judges

Tuesday, August 4

AIA Rulemaking and Guidance Changes

Lead Judge Susan Mitchell

Tuesday, October 6

Best Practices before the PTAB

Panel of Administrative Patent Judges

For those seeking CLE in the months ahead, the Practicing Law Institute’s USPTO Post-Grant Patent Trials 2015. returns to San Francisco in two weeks.
Apr. 17, 2015 San Francisco, CA (webcast available) (Register here)

Also returning this month is the Patents Post-Grant.com free monthly webinar series. This month’s topic is “PTAB Changes & The Road Ahead.”  A registration link will be posted later this week.

ptabOver the years, the PTAB has shed it’s “super-examiner” role to more of that of an umpire— calling balls and strikes. That is to say, the PTAB has drifted toward a relatively narrower view of the scope of issues it will substantively review on appeal, perhaps as a matter of necessity in dealing with the crushing weight of the growing appeal backlog.

Yesterday, in Rexnord Industries v. Kappos (2011-1434), the Federal Circuit shifted the focus of the PTAB away from their recent umpire-like practices toward a more traditional judicial review model.

The Federal Circuit reversed the PTAB for failing to consider all theories raised by an appellee in support of an examiner’s decision in an inter partes patent reexamination irrespective of whether the theory or ground was adopted by the examiner. Rexnord, the third party requester, had proposed rejections based on a combination of references with the added rationale that a certain claimed feature – a gap of less than 10 mm – was merely an obvious design choice. The examiner rejected the claims on the proposed combination of references but did not adopt the design choice theory, instead, opting to substitute his own reasoning. Namely, the examiner’s rejection was premised on an interpretation of the claims which permitted the gap to be 0 mm, or nonexistent.

The PTAB reversed the examiner but refused to consider Rexnord’s “obvious design choice” argument as an alternative basis for affirming the examiner. The PTAB reasoned that its role on appeal  Continue Reading CAFC Finds PTAB More Than Mere Umpire