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PTAB

Failure to Consider AIA Patentability Challenges May Be Costly Mistake for Law Firms

The face of patent litigation in the U.S. was forever changed on September 16, 2012. This was the date the post grant patentability trials of the America Invent’s Act first became available to patent challengers. The emergence of the new low cost alternatives to patent litigation creates opportunities for patent challengers to pursue a lower cost resolution to patent disputes on far more favorable terms relative to the district court.

If not adequately considered as an alternative to patent litigation, ignorance of the new AIA proceedings may create malpractice opportunities for unsuccessful litigants against their former law firms.
Continue Reading Is it Malpractice to File a Declaratory Judgment of Invalidity After the AIA?

PTAB Selective on Trial Grounds

Having now completed the multi-city tour for the Practicing Law Institute’s USPTO Post Grant Patent Trials 2013 (on demand program here), I am still struck by the degree of doom and gloom expressed by the patent monetization crowd. Throughout the program stops in Chicago, New York City and earlier this week, San Francisco, many attendees expressed the concern that the new post grant PTAB proceedings were “patent killers.” Specifically, the institution rate of the trial orders issued to date was considered high (only two being denied). This, coupled with the more favorable challenger standards of the PTAB, has more than a few patentees quite worried.

While it is certainly true that the PTAB is a more favorable venue for patent challengers (no presumption of patent validity, no clear and convincing evidentiary requirements, etc), the trial orders issued to date show an intent on behalf of the PTAB to simplify and focus the dispute for trial. This simplification vastly reduces the workload of patentees relative to the old inter partes patent reexamination system. And with the addition of discovery before the PTAB, ultimate success for patentees seems far more likely before the PTAB relative to the old, never-ending, patent reexamination timelines.  …

Continue Reading PTAB Closely Scrutinizes Petition Grounds

Stay Calculus to Encourage Multi-Defendant Attacks

As the new patentability trials of the America Invents Act (AIA) have only been available for 7 months their impact is only now beginning to be felt in the district courts. The new USPTO Patent Trial & Appeal Board (PTAB) proceedings permit suspect patents of any vintage to be reconsidered in a far more speedier, cost effective, and challenger friendly manner relative to that of the federal district courts. Not surprisingly, there has been a robust demand for these proceedings with over 200 such petitions filed since September 16th—many of which target the patents of non-practicing entities (NPEs).

The impact of these new PTAB proceedings are beginning to be felt in the district courts as motions to stay the costlier court proceedings pending PTAB review are being considered almost daily. And, many courts are staying the parallel litigation in favor of the speedier USPTO proceedings. Interestingly with the argument of multi-year USPTO reexamination delays now eliminated by the faster PTAB proceedings, Patentees (NPEs in particular) are now emphasizing to the courts that estoppel only applies to the petitioner or real party in interest—not necessarily every defendant in a multi-defendant suit. As such, NPEs argue that a concluded PTAB proceeding will not simplify issues for trial because defendants that did not join in the petition filing would be free to raise the very same issues decided in the PTAB proceeding upon lifting of the stay.

The solution for non-petitioning defendants facing such an argument is really quite simple…..just pile on.…

Continue Reading NPEs Unwittingly Invite Lopsided Battles at PTAB

Robust Filings Reported for Some AIA Proceedings

Late last week, the USPTO issued a Final Rule to implement the Technical Amendment to the America Invents Act (AIA). The Notice essentially revises 37 C.F.R. § 42.102 to eliminate the “dead zone” for certain first inventor to file patents. You can find the straight forward rule notice (here) The rule became effective yesterday, March 25th.

In other news, the Patent Public Advisory Committee (PPAC) convened on March 15th at the USPTO Alexandria campus. During the meeting, the USPTO reported on the progress of AIA filings to date. There continues to be robust demand for Inter Partes Review (IPR), but others of the new AIA mechanisms have not proven nearly as popular as originally thought.
Continue Reading Post Grant Buzz – Spring 2013

Raising of Evidentiary Informalities Prior to Trial Institution

During PTAB patentability proceedings, the Federal Rules of Evidence are applied. And, while the USPTO’s definition of a “proceeding’ includes the preliminary proceeding (i.e., petition filing, preliminary response) it is important to keep in mind that the the trial Order is not the final word of the PTAB on patentability; it is simply a preliminary gauge of the merits prior to trial. The “trial” itself does not actually begin until after institution. As such motions by the Patentee that are directed to perceived evidentiary defects of the petition are deemed premature prior to trial institution.

This issue is often raised in the context of printed publications accompanying a petition to the PTAB for a patentability trial. While patents are considered self authenticating by the USPTO, publications can be considered inadmissable if not authenticated (and perhaps hearsay as to undated submssions) by the petitioner. But, the PTAB has set the time to challenge such evidence post-institution via a motion to exclude.…

Continue Reading Do the Federal Rules of Evidence Apply to Patent Trial & Appeal Board Petitions?

Fee Setting Authority Decreases Post Grant Costs

Based upon the fee setting authority provided in Section 10 of the America Invents Act (AIA), the USPTO post grant filing fees will be downwardly adjusted for both patent reexamination and the patentability trial proceedings of the Patent Trial & Appeal Board (PTAB). The new fees are discounted from the rates that became effective last September 16th, and take effect tomorrow, March 19th. (final rules here)

The fees for PTAB proceedings will be broken up into petition and trial phases. The apportionment enables the office to more precisely calibrate costs so that refunds may be provided, where appropriate. The petition portion of the fees correspond to the cost of considering the petition filing only. The trial portion of the fees corresponds to the cost of conducting the trial. The fees for patent reexamiantion will decrease for all filers, but will drop by 60-80% for those requesters qualifying as small and micro entities.

A more detailed explanation of the fee changes is provided below.…
Continue Reading USPTO Post Grant Fees Cut on March 19th

Increased Speed and Heightened Threshold Showing for New PTAB Proceedings Drive Stays

The primary business distinctions between the USPTO Patent Trial & Appeal Board (PTAB) proceedings and traditional court based patent invalidity proceedings are the vast improvements in cost, predictability, effectiveness, and speed of PTAB proceedings— but it is the speed and effectiveness that is changing the perspective of the judiciary on staying litigation pending USPTO proceedings.

As most are aware, the old patent reexamination system, at least on the inter partes side, has been replaced by IPR. IPR must be concluded by statute within 12-18 months, a marked improvement over the (roughly speaking) previous 6 year path through the Central Reexamination Unit (CRU), Board of Patent Appeals & Interferences (BPAI) and Court of Appeals for the Federal Circuit (CAFC). These changes are being quickly recognized by courts, several of which have agreed to halt litigation proceedings upon the mere filing of an IPR (months in advance of an Order to grant the IPR petitions).

Previously, when a patent reexamination was the basis for the motion to stay the court proceeding, the strongest plaintiff arguments in opposition were: (1) the significant USPTO delay would prove prejudicial to the plaintiff; and (2) the SNQ standard of patent reexamination led to a 97% grant rate—both of these arguments are now falling very flat.
Continue Reading Stay of Litigation Pending USPTO Review Now a Much Easier Call for Judiciary

Joinder Practice Extends Beyond Dissimilar Parties

Joinder practice at the Patent Trial & Appeal Board (PTAB) provides strategic opportunities for members of Joint Defense Groups (JDG). JDGs are especially common in patent troll assertions. Petitions from JDG co-defendants for joinder of an ongoing post grant patentability trial (i.e., IPR, PGR or CBM) that are filed within one month of trial institution and do not raise substantial issues beyond those presented in the previously granted petition, or those that simply file a copy of the previously granted petition, are likely to be liberally granted. Such joinder practice enables JDG co-defendants to actively participate in the ongoing post grant proceeding before the PTAB. As can be appreciated, through joinder, individual joint defense group members can secure the opportunity to participate in a proceeding they would otherwise have no control over, or no recourse should the original petitioner decide to settle.

Interestingly, the 12 month window of 35 U.S.C. § 315(b) that prevents defendants from pursuing an IPR beyond the 12 month anniversary of a service of complaint for patent infringement of a subject patent does not apply to joinder petitions (such as might typically be desired by JDG co-defendants). The legislative history on this exception is scant, but, the thinking seems to be that once a post grant patentability proceeding is seasonably initiated,the PTAB should be able to receive input from all interested parties.

Recently, in Microsoft Corp v. Proxyconn Inc. (IPR2013-00109, here) the PTAB has further clarified that joinder practice is not only a tool for “joinder of parties” to an existing post grant trial proceeding, but may also be leveraged to join together two proceedings of a same petitioner (as long as the first is seasonably presented). This “joinder of claims” practice may be especially helpful for those petitioners battling patent trolls.
Continue Reading Joinder Practice at PTAB Accounts for Common Patent Troll Tactic