Last week, the proposed patent reform legislation (HR 3309) was seemingly stalled for the remainder of 2013. This road block was primarily erected by the Business Software Alliance, and other pro software patent lobbyist that were taking issue with certain proposed changes to Section 18 of the America
Last week, the USPTO issued the official tallies/progress statistics for Inter Partes Review (IPR), Post Grant Review (PGR) and the Covered Business Method (CBM) proceedings. As of November 7, 2013 the Patent Trial & Appeal Board (PTAB) has received 627 IPR petitions and 78 CBM petitions
Generally speaking, inter partes patent reexamination was pursued relatively infrequently by foreign based entities. Unlike their U.S. based counterparts, foreign based companies rarely employed patent reexamination as a tool to resolve patent disputes in a more cost effective manner, and/or to pressure opponents in a parallel litigation. This phenomena was especially odd for Japanese innovators. This is because many of the top ten patent filers are Japanese companies. Clearly these companies were familiar with USPTO proceedings, but remained uncomfortable with the USPTO as a source of potential resolution for patent validity disputes.
Since the passage of the new patentability challenges of the America Invents Act (AIA), the public has overwhelmingly embraced Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings as a viable option to traditional patent limitation—and, unlike inter partes patent reexamination, Japanese innovators are not far behind.
Continue Reading Japanese Innovators Begin to Embrace PTAB Challenges for Patent Dispute Resolution
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
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
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
One of the biggest misconceptions about the new patentability challenges of the America Invents Act (AIA) is the notion that these administrative trial proceedings are somehow analogous to district court litigation — nothing could be further from the truth. Rather, the new AIA proceedings simply skip over the previous patent reexamination examiner phase and go straight to the Patent Trial & Appeal Board (PTAB) phase, with a very limited opportunity for expert depositions along the way.
While it is certainly true that Inter Partes Review (IPR), Post Grant Review (PGR) and the Covered Business Method (CBM) proceedings are “trials,” these PTAB trials are governed by their own unique procedures, and are almost exclusively conducted on paper. As is made clear from the 12 months of proceedings to date, discovery practice is quite limited for these trials since they are based on documentary evidence only (i.e., patents and printed publications).
Looking at the top 5 IPR petition drafting mistakes, it is not surprising that most stem from the failure to recognize the key differences between PTAB and district court proceedings.
Today marks the one year anniversary of the new patent challenge mechanisms of the America Invents Act (AIA). Over the past few months there have been many noteworthy rulings in the 550+ Inter Partes Review (IPR) proceedings and 50+ Covered Business Method (CBM) proceedings. This week, I will look at the rulings that helped shape post grant practice before the PTAB over the first year. Today we start at the beginning with formal petition practice. Later this week, I will look at other phases of the proceeding, up to the time of oral argument such as effective petition practices, motion practice, joinder practice, and requests for additional discovery. While these rules and best practices are certain to evolve further, the PTAB’s decisions over the past year provide invaluable guidance far beyond that provided in the statute, legislative history, rules and notices.
The first step in any IPR, CBM or PGR proceeding is the preparation and filing of the petition.
Continue Reading Top 5 Reasons for Non-Compliant IPR Petitions