Business Method Patent Challenge

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“Closely Tied” Language of Cuozzo & Institution-Centric Statutes

The en banc opinion on the scope of the AIA’s appeal bar (35 U.S.C. §§ 324(e)/314(d)) remains outstanding in WiFi One.  Still, we have seen a few opinions from the Federal Circuit as of late that nibble around the edges of this issue.  From these decisions, we see the Court focusing on the statute underlying the appealed issue, and whether or not that statute is tied, in timing or substance, to the institution stage.  The most recent, Credit Acceptance Corp. v. Westlake Services, found another exception to the appeal bar for CBM estoppel. 35 U.S.C. 325(e)(1).
Continue Reading Another WiFi One Hint from the CAFC

High Court to Review Constitutionality of AIA Trials

The Supreme Court has had at least three occasions over the past 7 months to review the constitutionality of AIA trial proceedings — it declined all three invitations. Thus, the writing appeared to be on the wall when the same question was posed recently in Oil States Energy Services v. Greene’s Energy Group.  But, then the Federal Circuit wavered somewhat as to its conviction in its own precedent on point.  When asked to reconsider the debate as to whether a patent is purely a private right or public right (as previously decided in MCM Portfolio LLC v. Hewlett-Packard Co. et al.) the CAFC’s en banc denial of that request a few weeks ago (here) was a split decision.  (As a reminder, as a public right, a patent may be adjudicated by an Article I court).

Never one to shy away from a new opportunity to set the CAFC straight, the High Court suddenly became interested in the very same debate it only very recently passed over three times, granting certiorari yesterday. (Order here, briefs here)…
Continue Reading AIA Trials Unconstitutional? Don’t Bet on It

Preliminary Responses Accompanied by Declaration Evidence: Updated Results 

Back on May 1st of 2016, the Patent Trial & Appeal Board (PTAB) began to accept new testimonial evidence with patentee preliminary responses.  The PTAB implemented this change to address complaints of patentees who claimed they were disadvantaged by previous rules precluding such new evidence from accompanying a preliminary response. It was argued that the previous rules were especially imbalanced as almost all petitions were accompanied by petitioner declaration evidence, and that absent evidence in kind from patentees, institution was unavoidable.  I had my doubts as to whether this new mechanism would be the boon that patentees had hoped.

Now a year removed, some updated results.
Continue Reading Preliminary Response Evidence Should Focus on Technology

Focus of CBM Standing Analysis: Claim Language

Yesterday, the Federal Circuit denied en banc review in Secure Axcess LLC v. PNC Bank National Assoc., et al.  The rehearing request sought a full court review of America Invents Act (AIA) Sec. 18’s definition of a “business method patent.” This same issue was denied en banc review in April of this year in Google v. Unwired Planet. As in that decision, the dissents from denial raised the appeal bar debate now awaiting decision in WiFi One.
Continue Reading En Banc Denial of CBM Issue Raises Appeal Bar Debate

“All or Nothing” PTAB Institution Practice Coming Soon?

Today, the Supreme Court granted certiorari in SAS Institute Inc., v. ComplemenSoft LLC.   As previously explained, SAS argues that partial PTAB trial institutions are inconsistent with the controlling statutes of the America Invents Act (AIA).  That is, if the PTAB finds that at least one claim is demonstrated as likely unpatentable, the PTAB should institute trial for all petitioned claims.  

The dispute stems from an IPR filing of SAS in which it challenged all sixteen claims of ComplementSoft’s 7,110,936 patent.  Trial was instituted for claims 1 and 3-10, but claims 2 and 11-16 were denied institution.  On appeal to the Federal Circuit, SAS argued that it was inefficient to institute on only a subset of claims, and that the controlling rule authorizing partial institution (37 C.F.R. § 42.108(a) was in direct conflict with statutes 35 U.S.C. §§ 314(a)/318(a).  The Federal Circuit disagreed.

Basically, SAS is seeking an end-run around the 314(d) appeal bar.  In other words, had the PTAB simply moved forward with trial on all claims, SAS would have been able to appeal any unfavorable decision on claims 2 and 11-16 (presumably would have been found not unpatentable at the close of trial) as part of its appeal from the Final Written Decision (FWD).  As it currently stands, 314(d) prevents the appeal of claims 2 and 11-16 since they were denied institution. 

Setting aside for another day the academic debate on the merits, should the high court accept SAS’s argument, Patentees will be significantly prejudiced.

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Continue Reading Eliminating Partial PTAB Institutions Will Undermine Trial Practice

Public vs. Private Rights: Another PTAB Distraction

We all remember the “Great BRI Debate” that was Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2143–44 (2016). PTAB critics argued that the Board’s “broadest” claim construction rubric was unfairly stretching claims to embrace prior art — resulting in inevitable invalidity determinations. And that since the PTAB was now in the business of litigation, they must follow litigation claim construction practices deemed more favorable to patent holders (especially since the PTAB amendment process, the justification for BRI, was argued as illusory).  

In reality, the difference between BRI and the district court Philips practices is the label used to reference each. Both constructions apply the ordinary and customary meaning of a claim term at the time of the invention from the perspective of one of skill in the art. The difference in outcomes is a simple reflection of expert agency’s technical insight, not a meaningful difference in claim construction frameworks. For this reason, and many others, Cuozzo failed.

Attempts to derail PTAB trial proceedings still persist some 5 years into its life. These attempts now include recycling failed constitutional arguments against Article I adjudication practices.
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Continue Reading Constitutional Challenges to PTAB Another Dead End

CAFC Emphasizes that Art of Denied Petition Grounds Can Come Back to Haunt Patentees

It is not uncommon for an AIA Trial Proceeding, such as Inter Partes Review (IPR), to be instituted on a subset of unpatentability grounds presented in the petition. For example, IPR is currently granted on a claim-by-claim basis.  That is, petition grounds can be accepted or denied based upon the Patent Trial & Appeal Board’s (PTAB) conclusions as to whether a reasonable likelihood of prevailing is shown for a given patent claim.

In the case of partial PTAB trial institutions, Patentees will often employ a strategy to formally object to the aspects of the preliminary record that include reference to prior art of the denied grounds.  The thinking here is that the objection will preserve the right to exclude this seemingly irrelevant art from the record at the close of trial. 37 C.F.R. § 42.64. Yet, art of a denied petition ground can be (and usually is) highly relevant at trial.

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Continue Reading Denied Petition Grounds May Be Relevant to PTAB Trial

Excess of Jurisdiction vs. Agency Discretion

Earlier this week, the CAFC denied en banc rehearing in Google v. Unwired Planet.  While the denial was largely expected, Judge Hughes’ concurrence foreshadows the debate to come in WiFi One.  

That debate, at least for Judge Hughes, is separating matters of agency discretion from questions of constitutionality and/or ultimate statutory authority.
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Continue Reading En Banc Denial in Unwired Planet Previews WiFi One Debate

Preliminary Responses Accompanied by Declaration Evidence: Updated Results 

Back on May 1st, the Patent Trial & Appeal Board (PTAB) began to accept new testimonial evidence with patentee preliminary responses.  The PTAB implemented this change to address complaints that patentees were disadvantaged by previous rules precluding such evidence from accompanying a preliminary response to the petition. It was argued that the previous rules were especially imbalanced as almost all petitions were accompanied by petitioner declaration evidence.  I had my doubts.

Now that we are approaching a year removed from the rule modification, some updated results.  

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Continue Reading PTAB Preliminary Response Evidence Remains Unpopular

How Long is the Rehearing Wait?

A Petition for Rehearing may be filed in an AIA Trial Proceeding to challenge an Institution Decisions (ID) or a Final Written Decision (FWD) of the Patent Trial & Appeal Board (PTAB). Of course, a successful Petition for Rehearing is a rare occurrence. Fewer than 5% of cases to date have seen a successful Petition for Rehearing.  

A Petition for Rehearing pursued after an ID is often deemed to have the longest odds of success given the 314(d) bar to appealing such decisions (now pending review in WiFi One). On the other hand, given the ultimate appeal of FWDs to the Federal Circuit, it may be that such filings inherently enjoy closer scrutiny, and hence, slightly better odds of success.

In any event, both patentees and petitioners alike sometimes find it necessary to pursue rehearing for any number of strategic goals. But, given the lack of a mandated deadline for such decisions, the question becomes: “How Long is the Wait?”

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Continue Reading Rehearing Pendency in AIA Trial Proceedings