Inter Partes Review

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Article III Standing a Rare Concern at PTAB

Last week, the Court of Appeals of the Federal Circuit (CAFC) determined that public interest groups challenging patents at the USPTO must demonstrate Article III standing to appeal failed challenges to the Court. In Consumer Watchdog v. WARF, Consumer Watchdog  appealed  a determination of the Patent Trial & Appeal Board (PTAB) to uphold claims of WARF patent 7,029,913 directed to stem cell cultures (inter partes reexamination 95/000,154). (here). In dismissing the appeal, the Court explained that while Consumer Watchdog was provided a procedural right to appeal by the inter partes reexamination statutes, an “injury in fact” was necessary to confer Article III standing. That is, such appeals require “a particularized, concrete stake in the outcome of the reexamination.”  Consumer Watchdog’s status as an entity that does not compete with the patent owner was strongly emphasized in the decision. The court left “it to future panels to decide whether, under other circumstances, the preclusive effect of the estoppel provisions could constitute an injury in fact.”

While an interesting decision, such public interest challenges were exceedingly rare in inter partes patent reexamination (discontinued by the AIA in 2012). On the other hand, Inter Partes Review (IPR) has seen a fair amount of activity from such entities. For this reason, some have speculated that this decision may have a chilling effect on such filings going forward. However, since IPR challenges are not governed by reexamination procedural practices, such filings are likely to continue.…

Continue Reading IPR Joinder Limits Impact of WARF Decision

Outdated Patent Drafting Techniques Present Opportunities.

The Patent Trial & Appeal Board (PTAB) poses a significant threat to patent monetization. Not because the PTAB is anti-patent, far from it, but because the patents challenged today were drafted for the scrutiny of the district court. That is, in a district court invalidity is only found where the presumption of patent validity is overcome by a clear and convincing evidentiary showing. Given the relative low risk of this happening as compared to a non-infringement finding, patents were drafted to obtain the broadest claims possible for ensuring a clean infringement read. Of course, the attractiveness of PTAB challenges is the absence of such pro-patentee standards.

As discussed previously, now that PTAB challenges are becoming the standard, initial hurdle, patents need to be drafted differently, or “post-grant proofed.” This new PTAB centric drafting and prosecution strategy is especially critical in the predictable arts. This is because existing claim drafting strategies might also permit your competitor to game the estoppel flowing from an unsuccessful Inter Partes Review (IPR) challenge.
Continue Reading Gaming IPR Estoppel

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Decision Indirectly Highlights Value of Post-Grant Challenges

Yesterday, the Supreme Court decided that the Federal Circuit’s “insolubly ambiguous” framework for analyzing indefiniteness was, well…. indefinite.  In Nautilus Inc. v Biosig Instruments, Inc., the court found that “. . .the expressions “insolubly ambiguous” and “amenable to construction” permeate the Federal Circuit’s recent decisions concerning § 112, ¶2’s requirement.  We agree with Nautilus and its amici that such terminology can leave courts and the patent bar at sea without a reliable compass” (here). In reversing the decision of the CAFC, the case was remanded with instructions to consider a re-calibrated standard. That is, whether the claims when read in light of the specification and prosecution history fail to inform, with reasonable certainty, the scope of the claims to one of skill in the relevant art. The new test, as discussed at length in the decision, emphasizes a more fact intensive analysis.

As pointed out in footnote 10 of the decision, the parties dispute over the proper weight to be accorded the underlying proofs (i.e., clear and convincing, or not), and the degree of deference to a previous post-grant determination of the USPTO, were left for another day—That day may be just around the corner.
Continue Reading Nautilus Decision to Drive PGR and CBM Filings

Patentee Successfully Narrows Claims in IPR

Since the passage of the America Invents Act (AIA) the Patent Trial & Appeal Board (PTAB) has successfully fulfilled its charge as a speedy, cost effective alternative to patent litigation. But, that is not to say that the road has been completely bump-free. As discussed previously, there has been some controversy in the early going as patentees struggle to adapt to the motion requirements necessary for amending claims before the PTAB. That is, many patentees perceive the rigid motion requirements as an unfair hurdle, justifying their criticism on the fact that the PTAB has yet to permit an amendment (save those simply cancelling claims).

This past Tuesday, an amendment finally made it through.
Continue Reading PTAB Grants First Motion to Amend in IPR

Patent Reform Has Been in the Hands of the Public Since September 2012

The last round of patent reform was enacted into law in 2011 as the America Invents Act (AIA). Along with the AIA came new patent challenge mechanisms that first became available to the public in September of 2012. These mechanisms have quickly increased in popularity and are only now disrupting the business of abusive patent litigation. For whatever reason, Congress has decided to forge ahead with new reform efforts despite the game changing impact of the AIA — an effort seemingly stalled at present. As Congress continues to debate the need for further patent reform, the impact of the AIA is becoming increasingly harder to ignore. That is, the public’s appetite for the low cost, post grant patent challenge proceedings of the AIA is surging, and the efficacy of these proceedings on assertion entities is impressive.

Since their initial availability in September of 2012,…
Continue Reading PTAB Popularity Undermines Push for Further Patent Reform

Pre-Issuance vs. Post Issuance…PTAB Does Both

Yesterday, the CAFC explored the proper standard for a USPTO indefiniteness analysis in In re Packard (here). Given that the Supreme Court has taken up the other side of this debate in Nautilus v, Biosig Instruments Inc., namely, the proper standard for a district court indefiniteness analysis, the Court’s holding was very delicately crafted. In affirming the USPTO’s rejection under 35 U.S.C. § 112(b) the Court found the examiner showing under 112 (which is based on a requirement of clarity in claim drafting) demanded a persuasive rebuttal from the patentee. In the eyes of the Court, the patentee failed to meet the rebuttal burden, so the indefiniteness rejection was affirmed.

The concurring opinion went a step further and found that the USPTO standard of “clarity” was an even lower threshold than that debated in Nautilus. (i.e., “insolubly ambiguous” test vs. adopting an interpretation that comports with the understanding of one of skill in the art). This lowermost standard was endorsed by the concurring opinion in deference to the expert agency and their role in protecting the public notice function of patents.

Packard presents a clear distinction between the “pre-issuance” role of the USPTO relative to the “post-issuance” role of the courts. However, the vast majority of appeals headed to the CAFC in the years ahead will be post-issuance patent challenges lodged with the USPTO. What does In re Packard mean for post-grant patent practice at the Patent Trial & Appeal Board (PTAB)?…

Continue Reading CAFC Sends Conflicting Messages to PTAB on Indefiniteness Standard

PTAB Post Grant Patent Challenges to Help Demonstrate “Exceptional” Cases

Last week’s Supreme Court decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc. broadened the “exceptional case” rubric used to determine when an award of attorney fees is appropriate in a district court patent dispute. On the same day, in Highmark Inc. v. Allcare Health Mgmt. Sys., the Court re-calibrated the level of deference the CAFC must accord to such determinations on appeal. It remains unclear if improving the odds of securing fees in a legal sense will translate to practical impact for patent litigants. That is, given the historic disinclination of district court judges to award fees, especially in certain plaintiff friendly jurisdictions, whether these decisions will really advance the needle for accused infringers. What is certain, however, is that accused infringers will be far more active in seeking such relief going forward, and may seek to creatively leverage PTAB patent challenge proceedings to support their case.

Can an ongoing PTAB proceeding help distinguish an “exceptional” case?
Continue Reading Supreme Court Injects Octane to Further Fuel PTAB Demand

Judiciary Simplifies Patent Reform Debate…..Again

Although promised on Monday, the world still awaits the highly anticipated Senate patent reform bill. As pointed out previously, a major sticking point is the “fee shifting” (a.k.a. loser pays) aspect of the bill. The Senate has seemingly struggled to balance the needs of innovators that enforce patents with the need to rein in patent troll profiteering. That struggle may have been mooted today by the Supreme Court’s decision in Octane Fitness LLC v. Icon Health & Fitness, Inc. (here)…
Continue Reading Octane Fitness To Spur Senate Patent Reform Bill?

Statutory Prohibition Against Appellate Review Of IPR Institution Decisions

Yesterday, in three separate decisions, the CAFC made clear that the grant/denial of an IPR by the Patent Trial & Appeal Board (PTAB) is not reviewable. The CAFC based their decisions on 35 U.S.C. § 314(d), which states:

No Appeal.— The determination by the Director

…

Tweaks to Strict Motion Guidelines Are in Order

Since the passage of the America Invents Act (AIA) the Patent Trial & Appeal Board (PTAB) has successfully fulfilled it’s charge as a speedy, cost effective alternative to patent litigation. The PTAB has been so effective in cancelling patent claims, based on the limited, preliminary results, that the Board is being criticized as anti-patent. As discussed earlier this week, this criticism is unfounded as the USPTO will always be a significantly more patent challenger friendly forum relative to the district court. Still, there is another aspect of the early statistics that patentees find of equal concern, the perceived impossibility of successfully amending the claims of a patent during a PTAB challenge.

To date, the PTAB has not granted a single motion to amend.

The PTAB properly points out that that there is a very small sample of cases in which amendment has even been attempted, and a successful motion is expected to be issued shortly. Yet, the current statistical situation (as transient as it may be), coupled with the fact that the strict motion to amend guidelines have always been viewed unfavorably, is resulting in a bit of a black eye. This at a time when maintaining the BRI standard in PTAB proceedings is being justified based upon the ability to amend.

To the Board’s credit, the current round table initiative is designed to receive feedback for the purpose of revising some rules of practice. To this end, below are some changes that I believe would improve patentee prospects for amendment while maintaining the PTAB’s mission to expeditiously decide these important, but complex issues of patentability.
Continue Reading Improving PTAB Motion to Amend Practice