PTAB Explains Orange Book Trial Experiences

In today’s Boardside Chat, the Patent Trial & Appeal Board (PTAB) explained expanded panel practice, and provided some useful insight into its work on Orange Book patents.

The statistics (here) highlight:

•83% of all petitions challenging Orange Book-listed patents result in the patent being unchanged by PTAB
•The cumulative institution rate for Orange Book petitions (66%) is essentially the same as the cumulative overall institution rate (68%)
•Just over half of all final written decisions for petitions challenging Orange Book-listed patents find all claims patentable
•80% of all challenged Orange Book-listed patents have 1 or 2 petitions, compared to 87% of all challenged patents
•85% of all challenged Orange Book-listed patents have 1 or 2 petitioners, compared to 94% of all challenged patents

Petitions Challenging Orange Book-listed Patents

(as of End FY17: 9/16/12 to 9/30/17)

WiFi One Opens the Door to Reconsideration of Well-Established PTAB Precedent

The Federal Circuit’s softening of the appeal bar (35 U.S.C. § 314(d)) in WiFi One will now allow the Court to consider matters unrelated to the merits of an institution decision, and in some cases, well-established precedent of the Patent Trial & Appeal Board (PTAB).

For example, in Oracle Corp. v. Click-to-Call Techs. LP Case IPR2013-00312, Paper 26 (Oct. 30, 2013), Section (III.A) was designated precedential.  This section explains that the dismissal of a lawsuit “without prejudice” nullifies the service of the complaint relative to 35 U.S.C. § 315(b).  The Federal Circuit announced last Friday that it can now consider this precedent, post WiFi One.

Continue Reading CAFC to Consider Popular IPR Time Bar Exception

WiFi One Touchstone: Closely Related to Patentability Determination?

As I predicted would happen last Spring, the Court held today in Wi-Fi One v. Broadcom (here) that the appeal bar is limited to Director determinations closely related to the preliminary patentability determination, or the exercise of discretion not to institute. As such, questions that may be fully and finally decided before a trial on the merits, such as 315(b), are no longer barred from appeal. Continue Reading CAFC Softens PTAB Appeal Bar

The Tension Between Judicial Independence & Agency Consistency

As I have pointed out previously, the Board struggles to issue precedential decisions. This is because the Board (now approaching 300 judges) must reach a “sufficient majority” consensus on an issue before designating it precedential. As a practical matter, this outdated process excludes all but the most straight forward questions of law from receiving enough “yes” votes to be designated precedential.

To be sure, such disparity in opinion across a large number of judges is not surprising on close questions of law. Reasonable minds differ. Which is why it is somewhat surprising that 98% of PTAB merit-based decisions are unanimous. Continue Reading Judicial Independence & The PTAB

Tribal Immunity in Focus at PTAB

Previously I explained that the 7th amendment argument in Oil States and the 11th amendment argument for sovereign immunity from the PTAB are both tied to the same basic, threshold premise — IPR is a trial proceeding akin to an Article III lawsuit. Recent amicus filings supporting the petitioner echo that sentiment.

In response to the PTAB Order earlier this month authorizing amicus briefing, input from a number of organizations has been received.  The complete set is linked below.

Amicus Curiae Brief of the Oglala Sioux Tribe (here)

Amicus Curiae Brief of the Public Knowledge and the Electronic Frontier Foundation (here)

Amicus Curiae Brief of Scholars (here)

Amicus Curiae Brief of Askeladden LLC (here)

Amicus Curiae Brief of Deva Holding A.S. (here)

Amicus Curiae Brief of the High Tech Inventors Alliance (here)

Amicus Curiae Brief of the Seneca Nation (here)

Amicus Curiae Brief of the NAIPEC (here)

Amicus Curiae Brief of U.S. Inventor, LLC (here)

Amicus Curiae Brief of the SIIA (here)

Amicus Curiae Brief of The National Congress of American Indians et al.(here)

Amicus Curiae Brief of Luis Ortiz and Kermit Lopez (here)

Amicus Curiae Brief of The Association for Accessible Medicines (here)

Amicus Curiae Brief of The BSA | The Software Alliance (here)

Amicus Curiae Brief of James R. Major (here)

No Duty to Discuss Closest Prior Art…But you Probably Should Anyway

In implementing the Federal Circuit’s In Re Aqua Products’ holding, the Patent Trial & Appeal Board (PTAB) explains that “practice and procedure before the Board will not change.” And that, “[t]he Board will continue its current briefing practice as to the types, timing, and page limits of briefs.”

As pointed out previously, removing the burden from the Patent Owner Motion to Amend will aid the PTAB in granting far more motions, but ultimately, amendments are not expected to be any more attractive, or common. Continue Reading PTAB: Practice & Procedure Unchanged after Aqua Products

Standard Operating Procedures (SOP) 9 Released

As discussed last week, a remand to the Patent Trial & Appeal Board (PTAB) may be a short-lived victory for Patent Owners.

The PTAB has now officially revised the “Standard Operating Procedure 9 (SOP9)” directed to default procedures for cases remanded from the Federal Circuit.

Some highlights:

  • PTAB has set a goal of issuing remand decisions within 6 months of the Federal Circuit’s mandate.
  • Panels will now meet with the Chief, Deputy Chief, or their delegates (i.e., one of the Vice Chief Judges) to discuss the remanded case and issues presented therein.
  • PTAB has set forth default procedures for trials and appeals regarding whether further briefing, evidence, or oral hearings are warranted in individual case and whether prosecution will be reopened.

For more details, please read the revised SOP 9 (here).

Long Delayed Fee Increase Hits January 16th

Section 10 of the Leahy‐Smith America Invents Act (AIA) authorizes the United States Patent and Trademark Office (USPTO) to, in part, “set or adjust by rule any fee established, authorized, or charged” under Title 35 of the United States Code. At the close of 2016, a Notice of Proposed Rule Making (NPRM) issued requesting comments from the public on proposed fee increases for post-grant patent proceedings, including AIA trials. A Final Rule Notice issued today setting significant increases to take effect on January 16th 2018 for AIA Trial Proceedings. Continue Reading PTAB Trial Fees Set to Increase in January

Remand or Reversal?

Appeals from the Patent Trial & Appeal Board (PTAB) have now become a major component of the Federal Circuit’s docket. Given the deferential “substantial evidence” standard accorded PTAB decisions, upward of 60% of such appeals are simply affirmed — many without further comment. The remainder of PTAB appeals  include a mixed bag of partial affirmances, reversal and/or remands. While both reversal and remand outcomes are appellate “wins” for Patent Owners, a remand for a Patent Owner is often a winning of the Federal Circuit appeal battle only to lose the PTAB war. Continue Reading PTAB Revisited: Avoiding Federal Circuit Remands

Tribal Immunity Considered by PTAB

Previously I explained that the 7th amendment argument in Oil States and the 11th amendment argument for sovereign immunity from the PTAB are both tied to the same basic, threshold premise — IPR is a trial proceeding akin to an Article III lawsuit. This premise has been criticized by the Supreme Court in In re Cuozzo Speed Technologies, and, more recently by the Federal Circuit in Ultratec, Inc. v. Captioncall, LLC, 2017, (Fed. Cir. Aug. 28, 2017). For this reason, sovereign immunity (including tribal immunity) is likely to fall with the Oil States challenge.

Until such time, however, the PTAB must address the issue in the ongoing IPRs of Allergan’s Restasis® patents. In doing so, the PTAB has now issued an Order inviting amicus briefing, setting a submission deadline of December 1, 2017. Continue Reading PTAB Invites Amicus Input on Sovereign Immunity Dispute