Inter Partes Review

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Setting the Level of Skill May be Critical in Niche Arts

The obviousness of a claimed invention is assessed from the perspective of a hypothetical person of ordinary skill in the art (POSITA). For this reason, the degree of skill present in a given art is often contested by parties to a patent litigation. Often times, patent challengers assert a higher level of skill, which favors an obviousness determination. Conversely, patentees advance a lesser level of skill, militating in favor of patent validity. Yet, outside of highly specialized fields, such disputes are of rare consequence in the predictable arts.

The USPTO’s Patent Trial & Appeal Board (PTAB) rarely pronounces a precise level of skill, instead relying on In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board did not err in adopting the approach that the level of skill in the art was best determined by references of record). Given this, patent challengers in the predictable art rarely give much thought to advancing a precise level of skill in their post-grant challenges.

As made clear last week by the Court of Appeals for the Federal Circuit (CAFC), setting the level of skill could be especially important for art subject to a non-analogous art attack.
Continue Reading Anticipating Non-Analogous Art Arguments at the PTAB

PTAB Claim Analysis Can Serve as Persuasive Authority

Inter Partes Review (IPR), Post-Grant Review (PGR) and Covered Business Method (CBM) proceedings of the Patent Trial & Appeal Board (PTAB) begin with a Trial Order that includes substantial guidance on matters of claim construction. Typically, key terms at issue in the proceeding are expressly construed by the panel of administrative patent judges (APJs). While such constructions are not binding on a parallel litigation proceeding due to the use of a different claim construction rubric by the USPTO, in some circumstances such findings can be devastating to a litigation campaign — well in advance of the typical Markman Order.
Continue Reading Leveraging PTAB Claim Analysis in the District Court

PTAB Speed Increases Likelihood of Amendment 

Prior to passage of the America Invents Act (AIA), patent reexamination was the only option available for patent challengers at the USPTO. But, patent reexamination lasted for years through appeal, especially inter partes patent reexaminations. For this reason, outside of those few patent disputes where the co-pending litigation was stayed, the reexamination became just another battle of attrition. As litigation costs mounted accused infringers were forced to settle independent of reexamination progress.

For non-practicing entities (NPEs) losing the patent at the end of a 5-7 year reexamination battle was less of a concern after extracting business value from the patent. So, even where the reexamination produced compelling evidence of unpatentability, amendment of originally issued claims was relatively uncommon. This is because amending original claims created obvious intervening rights problems, and might increase the chance of a litigation stay. NPEs preferred losing slowly to a claim amendment that would prevent monetization over several years of reexamination processing and appeals. 

The AIA not only broke the attrition model at the USPTO with its speed, but is forcing amendments of original claims at a much higher rate than in patent reexamination. There has been a significant focus on amendment practice before the PTAB. as such motions have rarely succeeded. For this reason, the PTAB is seeking feedback on motion to amend practice, the Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board asks:

2. What modifications, if any, should be made to the Board’s practice regarding motions to amend?…
Continue Reading Why Motions to Amend at the PTAB Are of Such Great Interest

Requests for Comment Touch Upon Claim Construction Standards at the PTAB

Back in June, the USPTO issued a Request For Information (RFI) in the Federal Register. The Notice, entitled, Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board posed 17 questions for consideration by those stakeholders involved in the patent challenge proceedings of the America Invents Act (AIA). Responses are due to the USPTO on September 16th, and, will be considered by the agency for the purpose of optimizing AIA trial proceedings going forward.

Over the next two weeks, I will explore the issues driving these queries as well as proposals for resolving problem areas. First up, is the question directed to claim construction, that is:

1. Under what circumstances, if any, should the Board decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?…
Continue Reading The PTAB Cannot Adopt a Phillips Claim Analysis for AIA Trial Proceedings

Fall 2014 Preview

With the summer vacation months behind us, the USPTO approaches the close of their fiscal year on September 30th. The end of the fiscal year is always a busy time for the agency. Both examiners and administrative patent law judges (APJs) will be focusing on finalizing their production quotas for the year. Historically, workflow from the agency peaks in September.

This month, the Patent Trial & Appeal Board (PTAB) will accept its 2000th post-grant trial petition. As I pointed out previously, this two year volume of filings has already exceeded the previous 13 year history of inter partes reexamination. September and October filings are expected to reach 200 petitions per month.

aia statistics 082814

With increased hirings, the AIA trial section will become the largest section of the PTAB in October.

In addition to dealing with the rising workflow, this fall the PTAB will also…
Continue Reading Post-Grant Buzz – Fall 2014

AIA Trials Drive PTAB Growth to 235+ Judges

The Patent Public Advisory Committee (PPAC) held its quarterly meeting last week at USPTO headquarters in Alexandria Virginia. Updates from the USPTO included a report from the Patent Trial & Appeal Board (PTAB) on appeal and AIA trial proceedings. Much of the report was directed to the subject of the recent Federal Register Notice seeking comment on AIA trial proceedings, however, there were some updates of note.

The PTAB reports that come October the AIA Trial Section will be the largest section of the Board. To put this growth in perspective, the Board was comprised of 70 judges, total, in 2011. The AIA Trial Section is already at 85 judges, and growing. (Other sections of the Board include patent interferences, patent reexamination appeals, ex parte application appeals, and management). The Board is expecting to reach 235+ total judges by October. The boost of judges to the trial section is necessary to decide the growing influx of AIA challenges within the 12-month statutory mandate.

Of course, it wont be long before ex parte appellants, especially small/independent inventors, use this growth on the post-grant side as a rallying cry of unfairness.
Continue Reading PTAB Triples in Size Since 2011

Lack of Severability Could Doom IPR Petition

When considering Inter Partes Review (IPR) as an alternative to a recently initiated patent litigation, a threshold consideration for defendants is the timing and notice requirements of the IPR statutes: 35 U.S.C. §§ 312(a)(2); 315(B). The former is familiar to most, that is, to be timely filed with the Patent Trial & Appeal Board (PTAB), the IPR petition must occur within the 1-year window of 35 U.S.C. §315(b). (within 1 year of the service of a complaint for infringement of the subject patent on the petitioner, real party in interest, or privy of the petitioner).

The latter notice requirement of 312(a)(2) is easily overlooked, and complicated by modern corporate structures. See ZOLL v. Philips, IPR2013-00609, Paper 15 (March 20, 2014) (here)

Given the proliferation of non-practicing entities (NPEs) lodging patent lawsuits against entire industries, it is not uncommon for groups of defendants to contemplate joint IPR filings. The goal is to present a united front to the district court (for motion to stay purposes) by pursuing a singular IPR petition as co-petitioners. When doing so, the complexities of corporate structures, litigation history of privies, indemnification obligations, and common interest agreements are compounded—creating petition vulnerability.

In such situations it may be that one co-petitioner of a given group could doom the petition for all involved.
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Continue Reading Divorcing a Co-Petitioner in IPR?

Expired Patents May Follow Shorter Trial Schedule

Some months back, I pointed out how the post-grant challenges of the USPTO’s Patent Trial & Appeal Board (PTAB) now follow a (7) month schedule. Given the 12-month statutory mandate to conclude such post-grant proceedings, the (7) month schedule allows for a (5) month back end for the Board to draft and issue the written decision. This (7) month schedule is down from the more generous (9) month schedule employed in many 2012-13 filings.

For those challenging/defending expired patents, prepare for an even shorter schedule.
Continue Reading PTAB Accelerates Trial Schedule for Expired Patent

Court Finds Clear & Convincing Invalidity Despite Previous USPTO Review

The USPTO applies the preponderance of the evidence standard in post-grant patent proceedings to assess patentability relative to applied prior art. For at least this reason, it is far easier to demonstrate unpatentability of a patent claim at the USPTO as compared to invalidity in the district court, which applies the clear and convincing evidentiary standard. As pointed out last week, art failing the lower threshold of the USPTO may even result in summary judgment of no invalidity in the district court. 

Applying the above logic then, it would seem imprudent to argue invalidity in the district court based upon art explicitly considered, and rejected by the USPTO in a post-grant proceeding. That is, unless you can convince the court that the earlier USPTO proceeding was incompetent.

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Continue Reading Court Unimpressed by PTO Review of Prior Art