Claim Interpretation

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APA Safeguards Rebuttal Opportunity to New Claim Construction

A fundamental safeguard of the Administrative Procedure Act (APA) is the opportunity to be heard and to present evidence. Over the years the Federal Circuit has reminded the PTAB that parties must have notice of the agency’s positions and a meaningful opportunity to rebut such positions. The same opportunity must be provided for positions of opposing parties — as long as such positions are deemed timely.

Since the SCOTUS decision in SAS institute, which explained that the petition serves to “guide the life of the litigation,” the Board has considered positions expressed in a petition to be fixed. That is, if a patent owner raises a new claim construction mid-trial, the petitioner may not stray from its original positions (typically addressing a different construction) to rebut the new position of the patent owner. As can be appreciated there is a clear tension between the due process guarantees of the APA and a rigid application of the SCOTUS explanation in SAS.

Yesterday, the CAFC issued a precedential decision to clarify that there is at least some wiggle room for petitioners.…

Continue Reading CAFC Clarifies PTAB Trial Scope – Coming Practice Changes

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Failed PTAB Bill Reemerges For a 6th Time

Yesterday, U.S. Senators Chris Coons (D-Del.),Thom Tillis(R-N.C.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Hawaii) introduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act (here). Also yesterday, some of the very same senators introduced the Patent Eligibility Restoration Act of 2023. 

The co-introduction of these bills suggests a plan to drive compromise on patent eligibility.…

Continue Reading New PTAB Bill to Drive 101 Compromise?

Would a “Mini-Markman” Have Helped Patent Owners?

A long time ago, in a galaxy, far, far away….the Patent Trial & Appeal Board (PTAB) considered implementing a Markman style claim construction procedure it labeled a “Mini-Markman.” The idea, along with others was the result of a 2015-16 listening tour conducted by the agency under former USPTO Director Michelle Lee. The listening tour stopped at several locations across the U.S. to collect public feedback on AIA trial proceedings. The tour culminated in a draft rule package that contained a number of interesting ideas. Needless to say, that rule package was abandoned and never saw the light of day (for reasons unknown)

As we move into the new year and look forward to coming PTAB rule packages on discretionary denials and rehearing practices, I revisit this old idea in view of the never ending dialog on reforming the PTAB.…

Continue Reading The Long Lost PTAB Markman Plan

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