Pursuing Different Constructions Before the PTAB & Court?

Since the PTAB started applying the Philips standard for claim construction, petitioners have put a lot more thought into their proposed claim constructions. This is because it is no longer possible to point to the PTAB’s use of the broadest reasonable interpretation (BRI) as the basis for a different construction.

Now, petitioners are very careful to be consistent with disputed terms.  But, what happens if a petitioner argues for a broader construction at the PTAB, then argues for a more narrowed construction in the district court?
Continue Reading Keeping Your PTAB Story Straight

CAFC Refuses Remand on 112 6th Deficiencies

When challenging claims at the Patent Trial & Appeal Board (PTAB), Rule 42.104(b)(3) requires a Petitioner to identify the specific portions of a challenged patent’s specification that describe the structure corresponding to a claim’s means-plus-function claim feature.  Of course, if a petitioner fails to do so, the Board will reject Petitioner’s challenge for failing to comply with the Rule.  To the frustration of petitioners, however, where that failure is based upon the shortcomings of the challenged patent itself, the PTAB is  precluded from officially making such an indefiniteness determination.  Instead, the Board will simply conclude that the rule has not been satisfied.

A week back, the Federal Circuit reiterated this shortcoming of the IPR statutes.
Continue Reading PTAB Can’t Find Means-Plus-Function Claims Defective

PLI Program to Focus on New Patent Owner Opportunities

The USPTO’s Patent Trial and Appeal Board (PTAB) is in the midst of a historic makeover. New leadership has recently introduced significant changes. These changes are designed to rebalance AIA trial practices to allow patent owners a fighting chance. From new claim construction standards, amendment options,

(REMINDER – Updated Link) 
PatentsPostGrant.com February Webinar

The Patent Trial & Appeal Board (PTAB) discontinued its Broadest Reasonable claim Interpretation (BRI) rubric for AIA trials in the closing weeks of 2018. With the PTAB and district courts now aligned under the Phillips claim construction standard, patent litigants must now manage parallel proceedings in the face

PatentsPostGrant.com February Webinar

The Patent Trial & Appeal Board (PTAB) discontinued its Broadest Reasonable claim Interpretation (BRI) rubric for AIA trials in the closing weeks of 2018. With the PTAB and district courts now aligned under the Phillips claim construction standard, patent litigants must now manage parallel proceedings in the face of new estoppel risks,

PTAB 2018: A Year of Agency Recalibration

The Patent Trial & Appeal Board (PTAB) stole much of the 2018 patent law spotlight. From landmark Supreme Court decisions such as Oil States and SAS Institute, to significant en banc Federal Circuit decisions in WiFi-One, PTAB practice evolved more in 2018 than in any prior year. That said, the most impactful 2018 changes for practitioners were driven by the agency.

Under the pro-patent leadership of Director Iancu, the agency is expected to drive still further change in 2019.
Continue Reading Top 5 PTAB Practice Developments of 2018

Assignor Estoppel Precluded by AIA Statutes…But What of Other Equitable Defenses?

The doctrine of assignor estoppel bars the assignor of a patent from challenging the validity of the patent after it is assigned. In considering this defense to an AIA trial proceeding, the Patent Trial & Appeal Board (PTAB) had consistently held that this common-law doctrine is subject to abrogation by statute, and that the AIA statutes do exactly that. The Federal Circuit recently agreed.

However, the Board has considered and applied other equitable defenses. For example, the Board has applied waiver (prior to the Federal Circuit’s determination that tribal immunity did not apply to the PTAB). Thus, equitable defenses that do not conflict with the AIA statutes may be leveraged.

One equitable defense that could become more prominent going forward —given the alignment of claim construction standards between the PTAB and courts— is judicial estoppel.

Continue Reading Equitable Defenses at the PTAB

Final Rule Publishes Tomorrow

As predicted last week, the final rule package to switch the to the Phillips claim construction for AIA trial proceedings at the Patent Trial & Appeal Board (PTAB) will publish Thursday. (advanced copy here). The change will apply to inter partes review (IPR), post-grant review (PGR), and the transitional

Phillips Claim Construction Rule Imminent

Back in May, the USPTO issued a Notice of Proposed Rulemaking to switch from the Broadest Reasonable Interpretation (BRI) standard to a Phillips claim construction for AIA Trial Proceedings (here).  Thereafter the agency collected comments from the public, most of which favored the change, and submitted the issue to the Office of Management & Budget (OMB) for final regulatory approval. On Wednesday October 3rd the regulatory approval was given by OMB’s Office of Information & Regulatory Affairs (OIRA).  Thus, the USPTO may now publish a Final Rule Package to make the proposed switch to Phillips.

The Final Rule Package, which I expect will publish in the Federal Register next week does not take effect immediately. Rather, there will be an effective date 30-60 days after the date of publishing. Assuming publication next week, that would provide an effective date as early as the first full week of November, or as late as December. (There have been discussions that this change would be retroactive, but that is not my expectation. Too much re-work for existing proceedings, and on the heels of SAS, I just don’t see it.)  I expect that any petition filed on or after the effective date will be subject to the Phillips standard.

As I have pointed out previously, while I don’t expect this change will impact trials in a significant regard, it will impact filing strategies. That is, there will be an avalanche of petitions coming into the PTAB before the effective date.
Continue Reading PTAB Rule Package Dropping BRI Clears Final Hurdle

Change in Claim Construction Standard Provides Greater Appellate Opportunity

Some months back the Patent Trial & Appeal Board (PTAB) proposed dropping the broadest reasonable interpretation (BRI) in favor of the so-called “Phillips construction” of the courts. That final rule package, while expected to have been issued by now, is hung up in the Office of Management & Budget (OMB) for regulatory review. (While described in the proposed rule as a change that was not deemed “significant,” should OMB disagree, the final rules will be delayed until the necessary regulatory hoops can be navigated).  Nevertheless, whether in 2018 or 2019, it is clear that the agency intends to move PTAB trial proceedings away from BRI to the Phillips standard.

While this change may not move the needle very much for PTAB trials, it should provide enhanced appellate opportunity.
Continue Reading What a Phillips Construction Could Mean for PTAB Appeals