Inter Partes Review

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Rehearing Requests & CAFC Remands to Tax PTAB Resources

As discussed on Tuesday, sometimes the Court of Appeal for the Federal Circuit (CAFC) will find it necessary to remand an appeal to the Patent Trial & Appeal Board (PTAB). Likewise, sometimes the Solicitor will seek remand in appropriate circumstances. Historically remand occurs in about 10-15% of appeals from the agency on a yearly basis (sometimes less). In any given year this meant only a handful of cases required “re-work” from the PTAB as the number of appeals from the PTAB to the CAFC was relatively modest.

As to requests for rehearing, the Board sees some volume of requests in patent reexamination proceedings, especially inter partes reexamination. Yet, given the lengthy pendency of such reexamination proceedings, a fair amount of these appeals are avoided. Or, are at least not as hotly contested after the the requesting party settles, which was common. 

Thanks to the wildly popular post-grant patent challenge mechanisms of the America Invents Act (AIA), all of that is about to change.

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Continue Reading Backflow To Add to Growing PTAB Workload

Debate Over Issue Joinder Continues

Back in September, the Patent Trial & Appeal Board (PTAB) issued a rare expanded panel Order in Target Corp. v. Destination Maternity Corp., (IPR2014-00508) (here). In the Order, a divided panel denied issue joinder under 35 U.S.C. § 315(c) as a matter of law (i.e., the joining of two petitions of a same petitioning party). The decision was especially surprising given the fact that 315(c) had been previously interpreted by the PTAB as permitting such joinder practices. In fact, one such decision Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper 17, Dec. 21, 2012 is published on the PTO web site as a representative order.

Since the decision in Target, rehearing has been requested, and other petitioners have begun to assail the PTAB’s perceived change in course on the matter of issue joinder.
Continue Reading PTAB “Target Practice”

PTAB to Report on State-of-the-Board This Week

The PTAB is holding a two-day, all hands meeting this Tuesday and Wednesday (October 21-22). The PTAB will Webcast for the public the State-of-the-Board Address by Chief Administrative Patent Judge James Donald Smith on Tuesday morning at 10:45 – 11:15 a.m. Webcast information (here)

Unsuccessful IPR Petitioner Urges Expansive PTAB Estoppel

In a strange twist, an unsuccessful IPR petitioner is currently urging the CAFC to adopt an expansive interpretation of statutory estoppel for Inter Partes Review (IPR). That is, the petitioner argues where only a subset of claims challenged in an IPR petition are actually instituted for trial, the Patent Trial & Appeal Board (PTAB) should nonetheless carry non-instituted claims through trial to the final written decision. In such a case, estoppel would necessarily attach to the non-instituted claims by virtue of their inclusion in the written decision. 35 U.S.C. § 315(e)

Why on earth would a petitioner argue for such a thing?
Continue Reading Statutory Estoppel For IPR Petition Misses?

Roadshow Announced for Detroit Region

The Patent Trial & Appeal Board (PTAB) has announced Detroit Region Roadshows from November 5-19, 2014, focused on the AIA trials. The PTAB will visit Detroit, Chicago, Pittsburgh, Cleveland, Minneapolis, and Milwaukee for half-day, afternoon programs. 

The roadshows are designed to be interactive, including audience participation in an educational game show (which couldn’t possibly be any geekier unless they required everyone to dress in Star Wars costumes) as well as a hands-on workshop.
Continue Reading PTAB Announces Mid-West Roadshow

USPTO Inter Partes Patent Challenge Statistics Remain Consistent

With two full years of Inter Partes Review (IPR) proceedings on the books, we now have an adequate sample of decisions—158 through 9/26/14. While most IPR decisions are still pending appeal, the results are consistent with earlier inter partes reexamination outcomes.

As of September 2013, 696 inter partes reexamination certificates had been issued. (Not even half of the 1919 such proceedings pursued over the thirteen year history of the now defunct, never ending, reexamination option). …
Continue Reading IPR Final Decisions Track Reexamination Outcomes

Follow-On Filings Thwarted by 35 U.S.C. §325(d)

Last Friday, the Patent Trial & Appeal Board (PTAB) designated seven informational decisions. In each decision, the Office denied institution of an inter partes review (IPR) under 35 U.S.C. § 325(d). This statute permits the Director to take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. The new informative decisions are: 

These decisions demonstrate

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Continue Reading PTAB Cracks Down on Copy Cat AIA Petitions

Expanded Panel at Odds Over Statutory Interpretation of § 315(c)

Yesterday, the Patent Trial & Appeal Board (PTAB) issued a rare expanded panel Order in Target Corp. v. Destination Maternity Corp., (IPR2014-00508) (here). In the Order, a divided panel denied issue joinder under 35 U.S.C. § 315(c) as a matter of law (i.e., the joining of two petitions of a same petitioning party). The decision is especially surprising given the fact that 315(c) has been interpreted by the PTAB as permitting such joinder practices to date.

The Order is not designated precedential, or even informative — for this reason, it is especially troubling. Such a deeply divided panel of well respected APJs potentially tarnishes the Board’s reputation with the public as a predictable and consistent forum. This is because it may foster the perception that panel assignment may be outcome determinative. Moreover, if the majority view is adopted it could increase litigation gamemanship known to frustrate the ability of patent challengers to effectively utilize the PTAB.
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Continue Reading PTAB Divided Over Practice of Issue Joinder

Is Patentee Evidence Too Much Additional Work for the Board?

As discussed previously, the USPTO has issued a Request for Information (RFI) entitled, Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board. The RFI poses 17 questions, two of which were addressed in previous posts. Namely: Is there any circumstance where a broadest reasonable claim interpretation (BRI) should not be used for an unexpired patent? (here); and, Should any changes be made to motion to amend practice? (here)

Next up is the third query of the list:
3. Should new testimonial evidence be permitted in a Patent Owner Preliminary Response? If new testimonial evidence is permitted, how can the Board meet the statutory deadline to determine whether to institute a proceeding while ensuring fair treatment of all parties?…

Continue Reading PTAB to Permit New Evidence with Preliminary Responses?