Business Method Patent Challenge

Subscribe to Business Method Patent Challenge via RSS

Meet the New Boss, Same as the Old Boss….

When instituting an Inter Partes Review (IPR)—or any AIA trial proceeding for that matter— a panel of three administrative patent judges finds that the petitioner has made the threshold showing necessary for trial to proceed.  Later, these same three judges will assess all evidence presented during the trial to determine whether or not any claims of the subject patent should ultimately be cancelled as unpatentable.  Some patentees consider the use of the same judges from start to finish to be unfair. That is, there is a belief that use of the same judges brings with it a bias in favor of following through on the initial determination.

Yesterday, in Ethicon Endo-Surgery, Inc. v. Covidien LP The Federal Circuit considered whether the USPTO is obligated, under a variety of theories, to use different decision makers for the purpose of ensuring fairness.  

…
Continue Reading CAFC Endorses Use of Same PTAB Judges Throughout AIA Trials

Decisions of Note for Practitioners

During last week’s, blog webinar I recounted some of the more noteworthy Patent Trial & Appeal Board (PTAB) decisions of 2015. My focus was not on interesting cases in an academic sense, but instead, on cases that were impacting PTAB practice today.

These cases included clarification of various AIA estoppel provisions, the final word on issue joinder, clarification of the Idle Free amendment requirements, and a decision that was a game changer for AIA petition practice.
Continue Reading TOP 5 PTAB Decisions of 2015

CAFC Outlines Most Common Faults in Secondary Indicia Showing

The efficacy of objective evidence of non-obviousness (i.e., secondary indicia) hinges on the ability to demonstrate a “nexus” between the evidence and the subject patent claims. This is because such evidence cannot be accorded substantial weight absent a nexus to the claimed invention.  As pointed out in a previous post a compelling showing of nexus is more likely in the unpredictable arts where specific formulations, dosages and the like are more readily correlated to such secondary indicia as commercial success and long-felt but unsolved needs.

Recently, in Merck & Cie v.Gnosis S.p.A., (here) the Federal Circuit affirmed the Patent Trial & Appeal Board’s (PTAB) nexus analysis in an unpredictable art. In Merck, the Court agreed that patentee’s secondary indicia lacked a nexus to the claims of U.S. patent 6,011,040 (methods of using folates  to decrease levels of homocysteine) and, in the process, outlined some of the more common deficiencies in such evidence— illustrating the difficulties in presenting a nexus even in specific formulation claims.
Continue Reading CAFC Sides with PTAB’s Rejection of Secondary Indicia Nexus

Federal Circuit Finds Admissibility of Supplemental Information a Matter of Discretion

When discussing Patent Trial & Appeal Board (PTAB) trial practice, the topics of supplemental information and supplemental evidence are often confused. Supplemental evidence may be filed as a matter of right within 10 days of a party objection. 37 C.F.R. § 42.64(b)(2).  On the other hand, supplemental information is considered only upon motion of  a party. Typically, supplemental information is filed by a petitioner within one month of trial institution to proactively reinforce an active trial ground. (e.g., information not previously available, recently produced in litigation, etc).  37 C.F.R. § 42.123

Early on, Rule 42.123(a) was the target of significant patentee criticism. Patentees argued that the Rule provided a potential avenue for gamesmanship and petitioner sandbagging.  The rule provides:
§ 42.123 Filing of supplemental information.
(a) Motion to submit supplemental information. Once a trial has been instituted, a party may file a motion to submit supplemental information in accordance with the following requirements:
(1) A request for the authorization to file a motion to submit supplemental information is made within one month of the date the trial is instituted.
(2) The supplemental information must be relevant to a claim for which the trial has been instituted.

The patentee criticism was that the Rule permitted a petitioner to file supplemental information as long as it was filed within one month of institution— and relevant to a claim under review.  Indeed, patentees in some early IPRs declined to file a preliminary response for fear that it would be used as a roadmap by the petitioner to fashion its supplemental information filing.  

…
Continue Reading PTAB Supplemental Information Not a Sand Bagging Tool

PTAB Trial Not Necessarily Constrained to Petition Grounds

Patentees often amplify relatively insignificant technical differences between a patent claim and the prior art in district court to great success. Such strategies often fall flat in front of the USPTO where the technical expertise of the agency can expose such distinctions as inconsequential (inherent), or obvious — usually.

For example, in patent reexamination, examiners adopt and/or modify challenges to suit their technical understanding. Later, on appeal, judges of the Patent Trial & Appeal Board (PTAB) may issue new rejections where a trivial patent claim difference is known, or suggested by the art as obvious. More recently, however, the same PTAB judges reviewing AIA trial petitions often times take a hyper-technical view of proposed grounds of unpatentability. That is, judges of the trial section often feel constrained to the grounds presented in a petition even though an argued “distinction” over the proposed grounds is a well-known, trivial feature in the art.

Today, the Federal Circuit reiterated that the PTAB is not so constrained in dealing with AIA trial petitions.  
…
Continue Reading CAFC Finds PTAB Has Discretion to Augment Trial Grounds

Fee Setting Authority to be Exercised for FY 2017 (Oct. 2016)

In advance of the November 19, 2015 Patent Public Advisory Committee (PPAC) meeting, the USPTO has distributed its first fee change plan.  As a reminder, the agency was given fee setting authority under the America Invents Act, this is the first time that authority is being exercised.  The PPAC will provide input on the proposed fees (both patent and trademark) at its upcoming meeting.  Thereafter, the USPTO will issue a Federal Register Notice in January of 2016, with plans on a final notice of rulemaking, and implementation for fiscal year 2017 (October 1, 2016). 

Notable Patent Trial & Appeal Board (PTAB) fee increases include:

…
Continue Reading USPTO Proposes Hike in PTAB Fees for 2016

PTAB + Octane Fitness = Problem

Back in 2014, I explained that the recent shift in exceptional case analysis under Octane Fitness, LLC v. ICON Health & Fitness, Inc. and Highmark Inc. v. Allcare Health Mgmt. Sys., would provide opportunity for successful Patent Trial & Appeal Board (PTAB) petitioners. This is because accused infringers are universally embracing PTAB proceedings as an alternative to high cost litigation, and, are increasingly seeking fees after Octane.

Last week, the Southern District of California awarded fees of roughly $400k to a successful USPTO patent challenger in Deep Sky Software, Inc. v. Southwest Airlines Co., 3-10-cv-01234 (CASD).

…
Continue Reading Plaintiffs Beware: PTAB Fee Awards Might Be Headed Your Way

Customers of a Defendant Supplier Do Not Have CBM Standing

The Patent Trial & Appeal Board (PTAB) denied institution of a CBM review of Phoenix Licensing, LLC’s (“Phoenix”) 8,352,317 patent in CBM2015-00068, determining that the only remaining Petitioner, Acxiom Corp. (“Acxiom”), lacked standing under § 18(a)(1)(B) of the AIA. (here)

By way of background, the Petition was originally filed by four entities, but the proceeding was terminated with respect to AT&T Mobility LLC, AT&T Services, Inc., and Ford Motor Company (“Ford”), leaving only Acxiom. Under § 18(a)(1)(B), a person may not file a CBM unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or otherwise charged with infringement of the patent. As such, CBM petitions are required to establish that the petitioner meets the standing requirements with sufficient proof. In this case, the Petition merely stated that Acxiom is one of the “real parties-in-interest to and/or privies of one or more parties who have been sued…” without providing any additional explanation or evidence.
Continue Reading CBM Standing Flows Up the Supply Chain, Not Down