Inter Partes Review

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PTAB Trial Basics To Be Reviewed By High Court

Earlier this month the Supreme Court granted certiorari in Cuozzo Speed v. Lee.  The Cuozzo appeal involves the very first Inter Partes Review (IPR) ever filed with the USPTO’s Patent Trial & Appeal Board (PTAB). Throughout the IPR and CAFC appeals, patentee Cuozzo has maintained that the broadest reasonable claim interpretation (BRI) employed by the PTAB is improper, and that the PTAB’s decision to institute trial should be reviewable on appeal. The Federal Circuit disagreed on both issues, but sitting en banc was sharply divided.

In its petition for certiorari Cuozzo presented two issues for review to the Supreme Court, now accepted:

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.

2.     Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

The grant of certiorari in many Federal Circuit cases has led to reversal.  As such, many are viewing the high court’s interest in Cuozzo as an indication that the use of BRI in PTAB proceedings will be short-lived.  Unlikely.

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Continue Reading What Does High Court’s Review of Cuozzo Mean for PTAB?

Decisions Clarify Estoppel and 12-month Window Questions

Earlier this week I pointed out my Top 5 PTAB decisions for 2015. Also this week, the Board highlighted two of its own 2015 decisions, designating both precedential.

The first decision, LG is more noteworthy given it addresses the 12-month window, a topic that can get quite…

Meet the New Boss, Same as the Old Boss….

When instituting an Inter Partes Review (IPR)—or any AIA trial proceeding for that matter— a panel of three administrative patent judges finds that the petitioner has made the threshold showing necessary for trial to proceed.  Later, these same three judges will assess all evidence presented during the trial to determine whether or not any claims of the subject patent should ultimately be cancelled as unpatentable.  Some patentees consider the use of the same judges from start to finish to be unfair. That is, there is a belief that use of the same judges brings with it a bias in favor of following through on the initial determination.

Yesterday, in Ethicon Endo-Surgery, Inc. v. Covidien LP The Federal Circuit considered whether the USPTO is obligated, under a variety of theories, to use different decision makers for the purpose of ensuring fairness.  

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Continue Reading CAFC Endorses Use of Same PTAB Judges Throughout AIA Trials

Decisions of Note for Practitioners

During last week’s, blog webinar I recounted some of the more noteworthy Patent Trial & Appeal Board (PTAB) decisions of 2015. My focus was not on interesting cases in an academic sense, but instead, on cases that were impacting PTAB practice today.

These cases included clarification of various AIA estoppel provisions, the final word on issue joinder, clarification of the Idle Free amendment requirements, and a decision that was a game changer for AIA petition practice.
Continue Reading TOP 5 PTAB Decisions of 2015

CAFC Outlines Most Common Faults in Secondary Indicia Showing

The efficacy of objective evidence of non-obviousness (i.e., secondary indicia) hinges on the ability to demonstrate a “nexus” between the evidence and the subject patent claims. This is because such evidence cannot be accorded substantial weight absent a nexus to the claimed invention.  As pointed out in a previous post a compelling showing of nexus is more likely in the unpredictable arts where specific formulations, dosages and the like are more readily correlated to such secondary indicia as commercial success and long-felt but unsolved needs.

Recently, in Merck & Cie v.Gnosis S.p.A., (here) the Federal Circuit affirmed the Patent Trial & Appeal Board’s (PTAB) nexus analysis in an unpredictable art. In Merck, the Court agreed that patentee’s secondary indicia lacked a nexus to the claims of U.S. patent 6,011,040 (methods of using folates  to decrease levels of homocysteine) and, in the process, outlined some of the more common deficiencies in such evidence— illustrating the difficulties in presenting a nexus even in specific formulation claims.
Continue Reading CAFC Sides with PTAB’s Rejection of Secondary Indicia Nexus

Federal Circuit Finds Admissibility of Supplemental Information a Matter of Discretion

When discussing Patent Trial & Appeal Board (PTAB) trial practice, the topics of supplemental information and supplemental evidence are often confused. Supplemental evidence may be filed as a matter of right within 10 days of a party objection. 37 C.F.R. § 42.64(b)(2).  On the other hand, supplemental information is considered only upon motion of  a party. Typically, supplemental information is filed by a petitioner within one month of trial institution to proactively reinforce an active trial ground. (e.g., information not previously available, recently produced in litigation, etc).  37 C.F.R. § 42.123

Early on, Rule 42.123(a) was the target of significant patentee criticism. Patentees argued that the Rule provided a potential avenue for gamesmanship and petitioner sandbagging.  The rule provides:
§ 42.123 Filing of supplemental information.
(a) Motion to submit supplemental information. Once a trial has been instituted, a party may file a motion to submit supplemental information in accordance with the following requirements:
(1) A request for the authorization to file a motion to submit supplemental information is made within one month of the date the trial is instituted.
(2) The supplemental information must be relevant to a claim for which the trial has been instituted.

The patentee criticism was that the Rule permitted a petitioner to file supplemental information as long as it was filed within one month of institution— and relevant to a claim under review.  Indeed, patentees in some early IPRs declined to file a preliminary response for fear that it would be used as a roadmap by the petitioner to fashion its supplemental information filing.  

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Continue Reading PTAB Supplemental Information Not a Sand Bagging Tool

PTAB Trial Not Necessarily Constrained to Petition Grounds

Patentees often amplify relatively insignificant technical differences between a patent claim and the prior art in district court to great success. Such strategies often fall flat in front of the USPTO where the technical expertise of the agency can expose such distinctions as inconsequential (inherent), or obvious — usually.

For example, in patent reexamination, examiners adopt and/or modify challenges to suit their technical understanding. Later, on appeal, judges of the Patent Trial & Appeal Board (PTAB) may issue new rejections where a trivial patent claim difference is known, or suggested by the art as obvious. More recently, however, the same PTAB judges reviewing AIA trial petitions often times take a hyper-technical view of proposed grounds of unpatentability. That is, judges of the trial section often feel constrained to the grounds presented in a petition even though an argued “distinction” over the proposed grounds is a well-known, trivial feature in the art.

Today, the Federal Circuit reiterated that the PTAB is not so constrained in dealing with AIA trial petitions.  
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Continue Reading CAFC Finds PTAB Has Discretion to Augment Trial Grounds

Dissent Finds Burden of Unpatentability Rests with Petitioner for Amended Claims

Back in July, the USPTO’s Patent Trial & Appeal Board (PTAB) issued an informative decision in Masterimage 3D. Inc. v. RealD Inc. (IPR2015-00040) (here). In Masterimage, the Board explained that a patent owner moving to amend before the PTAB bears the burden of distinguishing its amended claims over prior art of record and also prior art known to the patent owner. In doing so the Board defined the scope of “prior art of record” and “prior art known to the patent owner.”  The Board defined prior art of record as:

     a. any material art in the prosecution history of the patent;
     b. any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review; and
     c. any material art of record in any other proceeding before the Office involving the patent.

Last week, in Prolitec, Inc., v. Scentair Technologies, Inc, the Federal Circuit considered whether this “prior art of record” burden was appropriate.
Continue Reading CAFC Debates PTAB Amendment Burden

Federal Circuit Reinforces Patent Rights as a Public Concern of a Regulatory Framework
The constitutionality of USPTO’s Inter Partes Review (IPR) mechanism has been challenged in a few district court cases over the past year. The challenge typically argues that the Patent Trial & Appeal Board (PTAB) cannot abrogate the jurisdiction of an Article III court in assessing patent validity, and/or that the PTAB prevents the 7th amendment right to a jury trial. I have largely refrained from discussing these recent cases as I found the arguments to be a bit too “creative.”  This is because the very same arguments failed decades ago when patent reexamination was first introduced in the 1980s.  Patlex Corp v. Mossinghoff (CAFC 1985)

The recent constitutionality arguments hoped to distinguish the earlier precedent on the basis that, unlike patent reexamination, which is examination based,  IPR is adjudicative.  I always found this position odd given that an unfavorable reexamination may be appealed to several adjudicative bodies, and IPR was a replacement for inter partes patent reexamination (which was also adversarial).

Today, in MCM Portfolio LLC v. Hewlett-Packard Company, the CAFC agreed, reinforcing the Patlex precedent of the 1980s.
Continue Reading CAFC Denies Strained Constitutionality Challenge to IPR Process