Business Method Patent Challenge

Subscribe to Business Method Patent Challenge via RSS

Amended Claims Survive IPR, Does Estoppel Follow?

Since the passage of the America Invents Act (AIA) the Patent Trial & Appeal Board (PTAB) has successfully fulfilled its charge as a speedy, cost effective alternative to patent litigation. But, that is not to say that the road has been completely bump-free. As discussed previously, there has been some controversy in the early going as patentees struggle to adapt to the motion requirements necessary for amending claims before the PTAB. That is, many patentees perceive the rigid motion requirements as an unfair hurdle, justifying their criticism on the fact that the PTAB has yet to permit a contested amendment….until last week, when the Board granted two.
…
Continue Reading PTAB Accepts First Contested Claim Amendment, Now What?

Changes to PTAB Rules Expected Shortly

Back in June of 2014 the USPTO issued a Request for Information in the Federal Register entitled, Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board. The notice posed 17 questions to the public. Since that time, the Office has considered the public feedback and has been working on two sets of changes to PTAB current trial practices.
Continue Reading PTAB Rule Changes for 2015

Top 5 Practice Changing PTAB Decisions of 2014

Since the start of the administrative patent trials of the America Invents Act (AIA) on September 16, 2012, much has changed at the Patent Trial & Appeal Board (PTAB). The number of AIA trial petitions has exploded. This increased workload has diminished the Board’s appetite for hand-holding, telephone conferences, and has arguably driven changes to once accepted procedural practices. Some might also argue that the ability to get a trial initiated has also become more difficult.

The coming months will bring further changes in the way of notice-and-comment rule making as well as a liberalization of current discovery and filing requirements. Before moving to that topic next week, let’s review the five most noteworthy decisions of 2014 for PTAB practitioners.
Continue Reading 2014 PTAB Decisions That Changed Post-Grant Trial Practice

Stays Pending IPR Granted in Most Cases

Prior to the passage of the America Invents Act (AIA) many district courts were less than impressed with the lengthy pendencies of USPTO patent reexamination proceedings. For this reason, motions to stay a litigation pending patent reexamination were often denied based upon the perceived prejudice of a 5-6 year delay (typical of reexaminations through appeal). The patent challenge proceedings of the AIA (IPR, CBM and PGR) were specifically designed, at least in part, to remedy the pendency issue.

The new patent challenge proceedings of the AIA are conducted before the USPTO’s Patent Trial & Appeal Board (PTAB) and must conclude, by statute, within 12 months of trial order. Many districts across the country have recognized the improved speed of the PTAB. Not surprisingly, the success rate for staying cases pending USPTO review has significantly improved.
…
Continue Reading District Courts Increasingly Await PTAB Decision

New Guidelines Follow Alice & Ultramercial Decisions

Today the USPTO will publish their new subject matter eligibility guidelines (35 U.S.C. § 101). A copy from the advanced reading room is available (here). While directed to examination procedures, the guidelines will  also be applicable to Inter Partes Review (IPR) and Covered Business Method (CBM) Challenge…

Multiple Factors Drive Downtrend in Amendments at PTAB

Post-issuance amendment of patents has never been popular among patentees. This is because such amendments typically trigger an intervening rights defense that bars the collection of past damages from accused infringers. That is, if the amended or new claim is not substantially identical in scope relative to a previously issued claim, potential infringers of the amended/new claims are provided with an absolute and/or equitable intervening rights defense (35 U.S.C. § 252). For this reason, historically, patentees would rarely amend claims at the USPTO that were asserted in a co-pending litigation.

This calculus changed somewhat with the introduction of the post-grant trial proceedings of the America Invents Act (AIA).

Unlike, the previous patent challenge mechanism, patent reexamination, the new administrative patentability trials are faster — much faster. This increase in speed undermines the previous “war of attrition” model. Patentees can no longer shrug off a patent challenge at the USPTO on the basis that it will never finish in time to matter. Now, at the PTAB, the choice between amending or not is effectively a choice between losing the patent altogether and living to fight another day. Moreover, with the ability to file a contingent amendment (i.e., an amendment not considered unless the original claims are deemed unpatentable) there would appear to be even more reason to “hedge” one’s bet.

For these reasons, amendment at the PTAB was sought in many of the earliest IPR filings. Since that time, however, patentees have reverted to old habits.

…
Continue Reading Amendment Efforts at PTAB Trend Downward

Board Sanctions Patentee in IPR Proceedings

37 C.F.R. § 42.12 provides that the Patent Trial & Appeal Board (PTAB) the power to sanction parties. The Board  has been reluctant to officially sanction parties given the relative newness of the AIA trial proceedings. The power to sanction parties was only been even alluded to in a handful of cases — which is typically enough. To my knowledge, the Board had yet to officially sanction a party. And then last week, a Patentee came along and pretty much volunteered to be the first.

In SAP America v. Lakshmi Arunachalam (IPR2014-00413, 00414) the pro se patentee appears to have challenged the impartiality of one of the assigned Administrative Patent Judges (APJ) based upon their mutual fund holdings (presumably accessed by a FOIA filing — all PTAB judges fill out a financial disclosure form every year). In doing so, the Patentee uploaded some documents to the Patent Review Processing System (PRPS) that were not only unauthorized, but were quite offensive. Similar statements were put on a web page, along with others accusing quite a few district court and CAFC judges of similar misdeeds.
…
Continue Reading PTAB Sanctions Patentee For Provocative Filings

2014 CLE Year Comes to a Close

The PatentsPostGrant.com free monthly webinar series has concluded for 2014, but will resume in January 2015. Yet, there remains at least one option for those a few credits short of their 2014 continuing legal education (CLE) requirements. Next Monday, I will host the Strafford Legal webinar entitled: Evolving PTAB Trial…

Review of PTAB Trial Orders Debated by CAFC

In recent weeks, the CAFC has twice considered whether or not the trial orders of the USPTO’s Patent Trial & Appeal Board (PTAB) become appealable once a final written decision is issued. First, on November 3, 2014, the CAFC heard arguments directed to this issue in In re Cuozzo Speed Technologies LLC. The Cuozzo appeal stemmed from the very first Inter Partes Review (IPR) ever filed. Cuozzo appealed the Board’s determination of unpatentability and argued that the IPR never should have been instituted in the first place. This past Wednesday in an appeal stemming from  the very first CBM filed, Versata Development Group v. SAP America, Inc, a similar threshold argument was made to the Court.

Can the CAFC consider an otherwise nonappealable PTAB trial order in reviewing a final written decision?
…
Continue Reading CAFC Considers Justiciability of PTAB Appeal Issues

Representative Order Suggests Evolving Motion to Amend Practice

Since the passage of the America Invents Act (AIA) the Patent Trial & Appeal Board (PTAB) has successfully fulfilled its charge as a speedy, cost effective alternative to patent litigation. But, that is not to say that the road has been completely bump-free. As discussed previously, there has been some controversy in the early going as patentees struggle to adapt to the motion requirements necessary for amending claims before the PTAB. That is, many patentees perceive the rigid motion requirements as an unfair hurdle, justifying their criticism on the fact that the PTAB has yet to permit a contested amendment.

In response, the PTAB has gathered feedback from the interested public on motion to amend practice in a recent Federal Register Notice entitled: Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board, which included the query:

What modifications, if any, should be made to the Board’s practice regarding motions to amend?

While the USPTO has yet to issue a response to the recent feedback, it appears that the PTAB is poised to adopt the suggestion to move claims from the body of the motion, to an appendix.
…
Continue Reading New Representative Order on PTAB Amendment Practice