As discussed on Monday, recent informative decisions explain the PTAB process for designating expanded panels for AIA trials. To apply the expressed rational of these decisions to the entirety of the Board, the Patent Trial & Appeal Board (PTAB) has revised its Standard Operating
As the Patent Trial & Appeal Board (PTAB) is now issuing an increasing number of Final Written Decisions (FWD) in addition to Institution Decisions, it is, not surprisingly, experiencing an increasing number of Requests for Rehearing. Many such Requests are seeking expanded panel review. To date, the Board has issued expanded panel decisions in a small handful of cases directed to fundamental questions of law and AIA trial practice. For example, expanded panels were used in Target Corp. v. Destination Maternity Corp., (IPR2014-00508), which was expanded twice to explore issue joinder authority of 35 U.S.C. §315(c), and Apple Inc., v. Rensselaer Polytechnic Instit., LLC., Case (IPR2014-00319) to explore 35 U.S.C. §315(b). Since these decisions, parties seeking rehearing have been asking for the same expanded panel treatment.
The intent of these informative decisions is clearly to eliminate such requests going forward. However, it seems likely that such requests, or “suggestions” will likely persist in one form or another.
Continue Reading PTAB Expanded Panels Are Not by Party Request
Don’t forget to register for tomorrow’s webinar (Wednesday April 29th @12:30 (est)), entitled: Trends, Changes & Evolving PTAB Practices (speakers: Scott McKeown & Greg Gardella). As the title suggests, the webinar will cover important developments, rule changes and trends at the PTAB, as well as anticipated rule changes and legislative initiatives. Register (HERE). A sampling of tomorrow’s content is provided below.
Continue Reading Trends, Changes, & Evolving PTAB Practice
The Patent Trial & Appeal Board (PTAB) has the power to terminate an Inter Partes Review (IPR), Post Grant Review (PGR), or a Covered Business Method (CBM) proceeding upon request of the parties. This discretionary power to terminate a patentability challenge by agreement (37 C.F.R. § 42.74) is a fairly new concept for patentability challenges. Historically reexamination proceedings could not be terminated by agreement. In reexaminations (inter partes) where the contesting parties settled their dispute, the challenging party would simply drop out of the inter partes reexamination, but the Office would continue with the reexamination in the interests of public policy. (cf. terminating an inter partes patent reexamination by operation of estoppel).
Since accepting AIA trial petitions, the PTAB has encouraged settlements in many instances. Typically, panels inquire as to settlement possibilities during teleconferences with the parties. More recently, the PTAB is encouraging settlement by assigning a date on the Scheduling Order for an explicit ADR statement from the parties.
Continue Reading PTAB & Alternative Dispute Resolution
Petition Dismissal is Appropriate for Improper Use of PTAB Resources
(This post ran yesterday on IPWatchdog.com for those that may have missed it.)
I first discussed the potential abuse of PTAB post-grant patent trial proceedings back in 2013. Since that time, attempts by profiteers to leverage the PTAB for improper purposes have failed. The most recent incarnation of this strategy is being advanced in the name of Hayman Capital, a hedge fund. As detailed Wednesday by IPWatchdog.com, a recent Wall Street Journal article outlined the true purpose of these filings is to influence stock prices of smaller bio/pharma patent holders to the negative (via PTAB IPR filings) while simultaneously investing in their close competitors. The Journal also explains that members of the fund invest a minimum of $1million each, with Hayman Capital earning a 20% return. The Journal notes that those behind the filings have also created an organization referred to as the “Coalition for Affordable Drugs,” but strongly implies this entity exists only for optics.
With the negative publicity surrounding these filings, and, if true, their reported abusive purposes, can the PTAB shut them down?
Yes, and I expect that they will.
Continue Reading Why Hedge Fund PTAB Filings Will Fail
A week back the U.S. Supreme Court decided B&B Hardware, Inc. v. Hargis Indus., Inc., No. 13-352, slip op., 575 U.S. __ (2015). In B&B, the Court held that a decision of the Trademark Trial and Appeal Board (TTAB) can have preclusive effect in subsequent district court proceedings (if the requirements of issue preclusion are otherwise met). That is, the Court determined that the action of an administrative agency can preclude later litigation of the “same issue” in a district court.
At present, the claim construction analysis employed by the Patent Trial & Appeal Board (PTAB), broadest reasonable interpretation (BRI), is considered different than the Philips construction employed by the district courts. For this reason, a claim construction ruling of the agency is not binding in a subsequent litigation pursuant to B&B. Yet, patentees urge that the use of what they consider to be an unfairly broad read of their claims (BRI) at the PTAB leads to improper cancellation of their patents. As I have pointed out previously this is a misguided belief. Different interpretations of a same patent claim term can be found, yet, in my view a proper determination is rarely different under either standard. Nevertheless, to cure this perceived inequity, patentees have consistently urged the PTAB to adopt the Philips analysis of the district courts for AIA trial proceedings.
Continue Reading Philips Construction at PTAB…Still Want it After B&B Hardware?
The USPTO’s Patent Trial & Appeal Board (PTAB) will host a “Boardside Chat” lunch webinar tomorrow, April 7th. This month’s chat will focus on “Do’s and Dont’s of Ex Parte Appeals.” The bi-monthly chat program updates the public on current Board activities and initiatives. Tomorrow’s dial-in is as follows:
Webinar
Yesterday, in Intellectual Ventures II LLC v. JPMorgan Chase & Co. (here), the CAFC considered whether or not the interlocutory jurisdiction of Section 18 of the America Invents Act (AIA) is triggered by the mere filing of a CBM petition. In this case, JP Morgan sought a stay pending a CBM filing, which was denied by the district court. Shortly thereafter, JP appealed to the CAFC under Section 18. The Patentee argued that appeal was improper because Section 18 only conveyed interlocutory jurisdiction for CBM “proceedings,” and the PTAB had not yet acted on the petition at the time of the appeal— that is, it wasn’t a “proceeding” unless and until instituted.
While the dissent is certainly correct as to goal of the CBM statutes, the unambiguous nature of statutes rule the day. Given the efficacy of CBM filings to date, perhaps we will see a technical amendment along these lines. (should any additional patent reform legislation ever make it out the door).
Of greater interest to me, however, is the CAFC’s commentary in this decision on the PTAB’s rules defining “proceeding.” PTAB rules (37 C.F.R. § 42.2) define a “proceeding” as being “a trial or preliminary proceeding.” A “preliminary proceeding” is defined as starting with the filing of a petition. The CAFC indicated that such an expansive definition of “proceeding” is inconsistent with the AIA statutes. What is the impact of this decree on the agency?
Continue Reading CAFC Ruling Calls Into Question PTAB Settlement Authority
The Patent Trial & Appeal Board (PTAB) has reached steady state in terms of work flow. The number of final decisions (delayed by the 18 month pre-trial and trial phase) are now tracking the significant petition filing rate that began in 2013. The decisions coming due today pertain to late 2013 petition filings. As the work has increased, several trends have emerged.
The most noteworthy trends are detailed below.
Continue Reading PTAB Trends — Spring 2015
The USPTO’s Patent Trial & Appeal Board (PTAB) has announced some of their “quick fix” rule changes today in advance of the anticipated Federal Register Notice. In addition to expected changes to page limits, the Director also mentioned other changes that may be proposed through typical notice & comment rule making later this year. The immediate changes are directed to page limits, including:
Later this year, more significant changes will be proposed, but are unlikely to be finalized until 2016, including:
Continue Reading PTAB Moves Forward on Quick-Fix Rule Changes