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Vast Majority of Amendments Denied on the Merits

Yesterday the Patent Trial & Appeal Board (PTAB) released a study on motions to amend. Contrary to popular belief, the majority of these motions are not denied on strict procedural grounds, but instead, on the merits.

The study points out that:

  • In the 1539 trials that have gone to completion or settled (where joined or consolidated trials were counted as a single trial), motions to amend were sought in a little over 10% of cases, 192 in all. (34 more motions to amend are pending in currently open cases.)
  • Of those 192, not all ultimately required the PTAB to pass on the merits of the motion. This is because, often, motions to amend are filed as “contingent” motions—if the PTAB upholds the patentability of the original claims, such motions never get decided. Several other cases settle before motions to amend are decided. Additionally, some motions to “amend” only request the cancellation of claims, and those are routinely granted.  
  • 94 of the 118 remaining petitions were denied on merit based deficiencies, only 22 were bounced on procedural grounds.

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Continue Reading PTAB Releases Eye Opening Amendment Stats

New Evidentiary Opportunity Dissolves Patentee Criticism

Patentees have lamented the inability to submit new, testimonial evidence via preliminary response since the inception of the Patent Trial & Appeal Board (PTAB). It was argued that since AIA trial petitions almost always included testimonial evidence, the inability to respond in kind was procedurally lopsided in favor of challengers.  Because of this perceived imbalance, patentees insisted that trial institution was a foregone conclusion.  Of course, if this patentee criticism were valid, far more trials would conclude favorably to patentees once such evidence is entered (it is permitted later, during trial).

Nevertheless, responsive to this criticism, the PTAB will begin allowing new testimonial evidence with preliminary responses on May 1st.  But, is this new patentee opportunity truly helpful?

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Continue Reading Patentees Beware: New PTAB Evidentiary Option Might Not Help

TTAB Vacates Precedential Decision By Court Order….PTAB Decisions Next?

in 2013 the Trademark Trial & Appeal Board (TTAB) issued  a precedential decision in a trademark opposition between the Board of Trustees of the University of Alabama et al v. William Pitts, Jr. & Christopher Blackburn. In the decision, the TTAB dismissed the opposition of the University against a mark for a logo with a houndstooth pattern with the words “Houndstooth Mafia” for use on T-shirts and hats. (The logo was seemingly inspired by the houndstooth fedora worn by the late Alabama football coach Paul “Bear” Bryant).  The opposition was dismissed as the TTAB determined that the University had no common law rights to a houndstooth pattern. (here)

Rather than appeal the TTAB decision to the Federal Circuit, the University opted to challenge the TTAB decision in a civil action under 15 U.S.C. 1071(b)(1) — in the Northern District of Alabama.  Before that action progressed very far the parties settled, and via consent decree of the Court, agreed that the TTAB decision should be vacated.  More importantly, the consent decree made statements of fact that the houndstooth pattern had become distinctive, which could impact other ongoing TTAB oppositions of the University on the same issue.  The University motioned to vacate the TTAB decision based upon the consent decree (here).  In an expanded panel decision that included the Chief Judge of the TTAB, the motion was unanimously denied. The TTAB determined that a settlement of private parties should not impact a decision of the TTAB absent extraordinary circumstances; especially where precedential.

The Alabama judge strongly disagreed.  In a stinging memorandum, he ordered the TTAB to vacate its Order within 14 days. (here)…
Continue Reading PTAB Vacatur By Court Order?

PPC Broadband Decision Volunteers Philips Claim Read in IPR Decision

The Patent Trial & Appeal Board’s (PTAB) use of the Broadest Reasonable Interpretation (BRI) standard is now slated for review by the Supreme Court in Cuozzo Speed v. Lee.  Opponents of the BRI standard, such as Cuozzo, argue that a “Philips” style claim construction is most appropriate for the PTAB because issued claims should be construed consistent with district court.  More importantly, Philips is considered to be a more patent friendly (i.e., narrower) interpretation. Yet, as I have pointed out before, the BRI and Philips frameworks are largely the same.  While the question posed to the Supreme Court in Cuozzo alleges a difference in the application of “plain and ordinary meaning,” this difference is readily disproven.

To the extent a difference can be delineated between PTAB and district court claim interpretation practices it is the perspective of the decision makers.  When applying Philips, courts will attempt to identify a “most reasonable” scope rather than the “broadest reasonable” scope.  While both selections require a reasonable outcome, and the constructions may lead to the same result in many cases, the “most reasonable” interpretation could include a selection between competing, reasonable constructions.  This selection is all too often driven by invalidity concerns. (despite the caution against such in the Philips decision itself)

Given that the PTAB has consistently maintained earlier BRI interpretations for patents that expired during review (requiring a switch to Philips) it is difficult to even identify a case where the PTAB’s proper application of Philips would move the needle.  Yesterday, the CAFC set out to provide such an example in PPC Broadband Inc., v. Corning Optical Communications RF, L.L.C.…
Continue Reading CAFC May Have Amplified Need for BRI at PTAB

CAFC Makes Clear BRI Encompasses Plain & Ordinary Meaning

The USPTO’s Broadest Reasonable Interpretation (BRI) encompasses an assessment of the plain and ordinary meaning of a patent claim term.  As such, the Supreme Court’s grant of certiorari in Cuozzo Speed v. Lee to review the Patent Trial & Appeal Board’s (PTAB) application of BRI is puzzling. 

As a reminder, the Cuozzo petition presented its BRI question as follows:

1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.

Last week, in TriVascular, Inc. v. Samuels, the Federal Circuit explained that a BRI analysis necessarily includes an assessment of the plain and ordinary meaning, and that BRI is not an unfettered license to interpret claims without regard for the written description.

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Continue Reading CAFC Undermines Cuozzo BRI Gripe

Patentee Burden Drives PTAB Obviousness Analysis

In Prolitec, Inc., v. Scentair Technologies, Inc.  the Court of Appeals for the Federal Circuit (CAFC) confirmed that patentees bear the burden of demonstrating patentability for amended claims in AIA trial proceedings before the USPTO Patent Trial & Appeal Board (PTAB).  Prolitec also found that this burden encompassed both the art of record in the AIA trial proceeding as well as the original patent prosecution history.

Earlier this week, in Illumina Cambridge LTD., v. Intelligent Bio-Systems, Inc., the Court explored the PTAB’s analysis of amended claims relative to the burden of the patentee.  That is, whether or not the Board is required to do a traditional obvious analysis for amended claims, anew, or whether the existing record can be used as a backdrop by which the movant’s burden can be assessed.

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Continue Reading CAFC Again Emphasizes Patentee Burden for PTAB Amendment

PTAB Trial Basics To Be Reviewed By High Court

Earlier this month the Supreme Court granted certiorari in Cuozzo Speed v. Lee.  The Cuozzo appeal involves the very first Inter Partes Review (IPR) ever filed with the USPTO’s Patent Trial & Appeal Board (PTAB). Throughout the IPR and CAFC appeals, patentee Cuozzo has maintained that the broadest reasonable claim interpretation (BRI) employed by the PTAB is improper, and that the PTAB’s decision to institute trial should be reviewable on appeal. The Federal Circuit disagreed on both issues, but sitting en banc was sharply divided.

In its petition for certiorari Cuozzo presented two issues for review to the Supreme Court, now accepted:

1.     Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.

2.     Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

The grant of certiorari in many Federal Circuit cases has led to reversal.  As such, many are viewing the high court’s interest in Cuozzo as an indication that the use of BRI in PTAB proceedings will be short-lived.  Unlikely.

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Continue Reading What Does High Court’s Review of Cuozzo Mean for PTAB?

Decisions Clarify Estoppel and 12-month Window Questions

Earlier this week I pointed out my Top 5 PTAB decisions for 2015. Also this week, the Board highlighted two of its own 2015 decisions, designating both precedential.

The first decision, LG is more noteworthy given it addresses the 12-month window, a topic that can get quite…