Inter Partes Review

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Scott McKeown & Chico Gholz

No “Iterative” or “Unfettered” Amendment Process in Patent Interference

The petitioner briefing to date in Cuozzo Speed Technologies, LLC v. Lee (No. 15-446; S.Ct) emphasizes the “examinational” application of the USPTO’s broadest reasonable interpretation (BRI).  The briefing argues that since PTAB trials are “adjudicative” as opposed to “examinational,” BRI could not have been contemplated by Congress for adjudicative proceedings (since, it is argued, that such adjudicative proceedings do not provide the same degree of amendment opportunity as examinational proceedings).  Yet, absent from the petitioner’s opening brief, save a single footnote, footnote 6, is any acknowledgement  that patent interference is an adjudicative proceeding that has applied BRI for decades to both involved applications and patents — and also limits amendment options to a motion process — just like Inter Partes Review (IPR).

That amending in patent interference operates in the same manner as AIA trials should hardly be surprising given that the AIA trial rules were built upon the existing patent interference framework.  Can this decades-old, adjudicatory framework, that both uses BRI and requires amendment by motion, be distinguished by Cuozzo?
Continue Reading Long-Standing Use of BRI in Interference a Hurdle for Cuozzo

Patentee Argues Joinder Statute Does Not Excuse Late IPR Petitions

There has been a fair amount of controversy regarding issue joinder practices at the PTAB.  But, to date, the language of 315(b) that seemingly excuses late IPR petition filings has been taken at face value.  That is, while 315(b) limits initiation of a an IPR to within 12 months of service of a complaint for infringement of the subject patent, the last sentence explains that “the time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).”

In a writ of mandamus filed with the Federal Circuit last week, the exception of 315(b) is argued as applicable only to timely filed petitions in which the request for joinder occurs outside of the 12-month window. In other words, the exception does not permit petitioners that have already missed their 12-month window to remedy the problem via joinder.
Continue Reading Mandamus Questions PTAB Joinder Practices

TTAB Vacates Precedential Decision By Court Order….PTAB Decisions Next?

in 2013 the Trademark Trial & Appeal Board (TTAB) issued  a precedential decision in a trademark opposition between the Board of Trustees of the University of Alabama et al v. William Pitts, Jr. & Christopher Blackburn. In the decision, the TTAB dismissed the opposition of the University against a mark for a logo with a houndstooth pattern with the words “Houndstooth Mafia” for use on T-shirts and hats. (The logo was seemingly inspired by the houndstooth fedora worn by the late Alabama football coach Paul “Bear” Bryant).  The opposition was dismissed as the TTAB determined that the University had no common law rights to a houndstooth pattern. (here)

Rather than appeal the TTAB decision to the Federal Circuit, the University opted to challenge the TTAB decision in a civil action under 15 U.S.C. 1071(b)(1) — in the Northern District of Alabama.  Before that action progressed very far the parties settled, and via consent decree of the Court, agreed that the TTAB decision should be vacated.  More importantly, the consent decree made statements of fact that the houndstooth pattern had become distinctive, which could impact other ongoing TTAB oppositions of the University on the same issue.  The University motioned to vacate the TTAB decision based upon the consent decree (here).  In an expanded panel decision that included the Chief Judge of the TTAB, the motion was unanimously denied. The TTAB determined that a settlement of private parties should not impact a decision of the TTAB absent extraordinary circumstances; especially where precedential.

The Alabama judge strongly disagreed.  In a stinging memorandum, he ordered the TTAB to vacate its Order within 14 days. (here)…
Continue Reading PTAB Vacatur By Court Order?

PPC Broadband Decision Volunteers Philips Claim Read in IPR Decision

The Patent Trial & Appeal Board’s (PTAB) use of the Broadest Reasonable Interpretation (BRI) standard is now slated for review by the Supreme Court in Cuozzo Speed v. Lee.  Opponents of the BRI standard, such as Cuozzo, argue that a “Philips” style claim construction is most appropriate for the PTAB because issued claims should be construed consistent with district court.  More importantly, Philips is considered to be a more patent friendly (i.e., narrower) interpretation. Yet, as I have pointed out before, the BRI and Philips frameworks are largely the same.  While the question posed to the Supreme Court in Cuozzo alleges a difference in the application of “plain and ordinary meaning,” this difference is readily disproven.

To the extent a difference can be delineated between PTAB and district court claim interpretation practices it is the perspective of the decision makers.  When applying Philips, courts will attempt to identify a “most reasonable” scope rather than the “broadest reasonable” scope.  While both selections require a reasonable outcome, and the constructions may lead to the same result in many cases, the “most reasonable” interpretation could include a selection between competing, reasonable constructions.  This selection is all too often driven by invalidity concerns. (despite the caution against such in the Philips decision itself)

Given that the PTAB has consistently maintained earlier BRI interpretations for patents that expired during review (requiring a switch to Philips) it is difficult to even identify a case where the PTAB’s proper application of Philips would move the needle.  Yesterday, the CAFC set out to provide such an example in PPC Broadband Inc., v. Corning Optical Communications RF, L.L.C.…
Continue Reading CAFC May Have Amplified Need for BRI at PTAB

CAFC Faults Treatment of Motion to Amend

Last week, the Federal Circuit remanded an Inter Partes Review (IPR) appeal from the Patent Trial & Appeal Board (PTAB) so that Patentee’s motion to amend could be reconsidered. In the decision, the Court faulted the Board for applying a strict view of the Idle Free requirements (softened by the PTAB after this decision in Masterimage). Additionally, the Court found the Board’s analysis lacking as to the patentable distinctiveness of substitute claims. Nike, Inc. v. Adidas AG 14-1542 (here)

While the Appellant-Patentee also sought to unravel the requirement to demonstrate patentability in a PTAB motion to amend, the Court maintained its course as established in Microsoft Corp. v. Proxyconn, Inc.  While far from an eventful remand, the Court’s mandate publicly demonstrates the corrective evolution of PTAB amendment practice. Decisions such as this will no doubt serve as data points in the Cuozzo appeal to the Supreme Court.

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Continue Reading Amendment Effort Heads Back to PTAB

PTAB Need Not Address Denied Trial Grounds in Final Decision

The Supreme Court will soon consider the propriety of the “appeal bar” of 35 U.S.C. § 314(d) in Cuozzo. This appeal bar of the America Invents Act (AIA) prevents appeal of institution decisions of the Patent Trial & Appeal Board (PTAB). To date, attempts to circumvent this bar have failed via writ of mandamus to the Court of Appeal for the Federal Circuit (CAFC), and lawsuits against the USPTO under the Administrative Procedure Act (APA).

This week, another attempt to side-step the appeal bar was denied by the CAFC in Synopsys Inc., v. Mentor Graphics Corp.…
Continue Reading CAFC Shuts Down Another Attempted Side-Step to 314(d) Bar

CAFC Makes Clear BRI Encompasses Plain & Ordinary Meaning

The USPTO’s Broadest Reasonable Interpretation (BRI) encompasses an assessment of the plain and ordinary meaning of a patent claim term.  As such, the Supreme Court’s grant of certiorari in Cuozzo Speed v. Lee to review the Patent Trial & Appeal Board’s (PTAB) application of BRI is puzzling. 

As a reminder, the Cuozzo petition presented its BRI question as follows:

1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.

Last week, in TriVascular, Inc. v. Samuels, the Federal Circuit explained that a BRI analysis necessarily includes an assessment of the plain and ordinary meaning, and that BRI is not an unfettered license to interpret claims without regard for the written description.

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Continue Reading CAFC Undermines Cuozzo BRI Gripe

Patentee Burden Drives PTAB Obviousness Analysis

In Prolitec, Inc., v. Scentair Technologies, Inc.  the Court of Appeals for the Federal Circuit (CAFC) confirmed that patentees bear the burden of demonstrating patentability for amended claims in AIA trial proceedings before the USPTO Patent Trial & Appeal Board (PTAB).  Prolitec also found that this burden encompassed both the art of record in the AIA trial proceeding as well as the original patent prosecution history.

Earlier this week, in Illumina Cambridge LTD., v. Intelligent Bio-Systems, Inc., the Court explored the PTAB’s analysis of amended claims relative to the burden of the patentee.  That is, whether or not the Board is required to do a traditional obvious analysis for amended claims, anew, or whether the existing record can be used as a backdrop by which the movant’s burden can be assessed.

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Continue Reading CAFC Again Emphasizes Patentee Burden for PTAB Amendment

Must IPRs Be Filed on a Weekend/Holiday to Meet the Requirements of 315(b)?

Petitioners seeking Inter Partes Review (IPR) must be mindful of the statutory bar of 35 U.S.C. § 315(b). This provision precludes IPR from being instituted for a patent in which the petitioner was served with a complaint of infringement more than one year prior to the petition filing. The rationale for the statutory bar of 315(b) is straightforward. That is, IPR was designed to be a true alternative to patent litigation, not an adjunct process that was typical of the inter partes patent reexamination proceeding it replaced. By mandating that an IPR filing be brought earlier in the litigation timeline, Congress hoped to avoid duplicative proceedings, avoid patentee harassment, and enhance the ability of the Patent Trial & Appeal Board (PTAB) to provide a timely resolution to such business disputes.

The time-limit language of 315(b) mandates denial of any petition filed “more than one year” after service of a complaint.  Nevertheless, the USPTO will routinely accept petitions filed more than one year after service of a complaint if the one year anniversary falls on a weekend or holiday. In such cases, the time to file is extended until the next USPTO business day. However, taking advantage of this weekend/holiday extension may prove risky in the electronic age.
Continue Reading The 315(b) IPR Window May be Shorter Than Once Thought