Inter Partes Review

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Reasonably Could Have Raised?

The new post grant trial proceedings of the Patent Trial & Appeal Board (PTAB) provide game changing opportunities for patent challengers. These opportunities include the virtual guarantee that certain business method patent litigation will be stayed pending the outcome of a Covered Business Method (CBM) patent challenge, and the ability to challenge an entire portfolio at one time. Indeed, the later opportunity was never before possible in any proceeding, USPTO, district court, or otherwise.

Yet, the new proceedings are not without some risk. For example, Inter Partes Review (IPR), much like its’ predecessor inter partes patent reexamination, operates to estop the challenger from making arguments in a later proceeding that were either raised or “could have been raised” in the previously concluded PTO proceeding. This “could have been raised” estoppel was revised for IPR proceedings, slightly, to embrace issues that “reasonably could have been raised.” The legislative history indicates that this change was designed to impart some term of degree of practicality to the new IPR estoppel standard.

While the prospective estoppel that may apply to petitioners of IPR proceedings has been softened, unlike patent reexamination requests, IPR petitions are limited to 60 double spaced pages. So, practically speaking, there are a limited number of issues that can be presented in 60 double spaced pages.

How will this IPR page limitation impact the “reasonableness” analysis of the district court?
Continue Reading Hedging Against Petitioner Estoppel at the PTAB

Expanded PTAB Panel Outlines Requirements for Unregistered Practitioners

Non-registered practitioners may, in limited circumstances, be permitted to appear before the Patent Trial & Appeal Board on a pro hac vice basis. 37 C.F.R § 42.10(c). In a previous discussion on this topic, I relayed the explanation of Chief Judge Smith that was provided on the USPTO website (America Invents Act (AIA) micro site) relative to the philosophies behind the PTAB’s pro hac vice rule proposal.

Earlier this month, an expanded panel of the PTAB issued the first order authorizing motions for pro hac vice admission in (IPR2013-00010) (order here).

The Order outlines the requirements for the motion an accompanying declaration as follows:…
Continue Reading PTAB Issues Order Outlining Base Pro Hac Vice Qualifications

InconsistencyCourt Troubled by Own Inconsistent Precedent

As explained very recently by Director Kappos, the USPTO has a well established practice of applying a broadest reasonable claim interpretation (BRI) in proceedings before the USPTO. For this reason, Director Kappos explained that although the AIA was silent on the type of claim analysis to be applied in the new post grant proceedings of the Patent Trial & Appeal Board (PTAB), BRI was deemed necessary for, inter alia, administrative consistency.

Yesterday, in Flo Healthcare Solutions, LLC. v. Kappos, the CAFC advanced a similar consistency theory in questioning whether or not USPTO claim constructions should be reviewed under a de novo standard, as is the court’s routine practice. Or, whether the USPTO’s constructions should be entitled to a different, “reasonableness” analysis as enunciated in some of the court’s more recent precedent. (decision here)
Continue Reading CAFC Contemplates De Novo Review of USPTO Claim Constructions

USPTO Provides Comprehensive AIA Resources

For those that may have missed the various CLE programs and USPTO road shows of the past few weeks, video highlights of the AIA Roadshows are posted on the USPTO web site (here). Also, a very comprehensive slide deck covering all AIA changes effective on September 16, 2012

So Let It Be Written, So Let It Be Done…Your Patent Portfolio That Is

Two weeks back I discussed the “patentee estoppel” impact of Rule 42.73(d)(3)(1). As a reminder, when a patent claim is cancelled or finally refused in a validity trial proceeding of the Patent Trial & Appeal Board (PTAB), the Patentee is thereafter precluded from taking an inconsistent action before the USPTO. This preclusion includes, obtaining in any patent, a claim that is not patentably distinct from the finally refused or cancelled claim.

In the earlier post, I discussed how the final refusal or cancellation of a patent claim could have a devastating impact on active continuation patent application portfolios. This is because when a parent patent has a broad, generic claim cancelled or refused in a post grant trial of the PTAB, the Patentee is estopped from pursuing a continuation (or reissue) application presenting claims of indistinct scope. Absent a proactive strategy, such a result would significantly undermine the investment in continuation application portfolios of large patent filers.

Perhaps even more disturbing, is the infectious nature of this estoppel relative to other, issued patents of an unsuccessful Patentee.
Continue Reading Creeping Death….The Infectious Estoppel Impact of PTAB Validity Trials

First Covered Business Method (CBM) Challenges & Inter Partes Review Petitions Filed

The new Patent Trial & Appeal Board (PTAB) web portal, known as the Patent Review Processing System (PRPS) went live at 12:01AM Sunday morning. At the time of this writing, 7 petitions for Inter Partes Review (IPR) have been filed, as well as…

First Inter Partes Review & Covered Business Method Filings Headed to the USPTO

The USPTO’s Patent Trial & Appeal Board (PTAB) opens its doors for business this coming Monday. As a reminder, submissions to the PTAB will need to be filed via the Patent Review Processing System (PRPS). The web portal system will go live…

Continuation Applications to be Collateral Damage to PTAB Proceedings?

The new patent validity trials of the Patent Trial & Appeal Board (PTAB), Post Grant Review (PGR), Transitional Program for Covered Business Method Patents (TPCBMP), and Inter Partes Review (IPR) introduce a new layer of estoppel for Patentees. This estoppel, once triggered by claim cancellation or refusal by the Patent Trial & Appeal Board (PTAB), could operate to effectively forfeit a Patentee’s continuation application portfolio.

The danger is significant as it is common practice for many Patentees to maintain continuation patent applications long after the issuance of a first patent. The pending continuation applications allow Patentees to adapt/refine their claims to changing products of the marketplace such as when competitors attempts to “design around” the claims of the initially issued patent. In this way, a robust continuation portfolio serves as a further hedge against infringement of the base patent. Indeed, for many large stakeholders, continuation patent application portfolios constitute a major investment.

Once a patent is challenged in a petition for IPR, PGR, or TPCBMP, what can a patentee do to protect their investment in continuation patent applications?

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Continue Reading Post Grant Patent Challenges To Threaten Continuation Portfolios

Stafford Legal Webinar on PTAB Practice

Next week, the Patent Trial & Appeal Board (PTAB) will begin to accept petitions for the post grant patent validity trials of the America Invents Act (AIA). For those needing a refresher, or crash course in the new proceedings, next Tuesday September 18th Stafford legal will host a 90-minute…

Patentees Faced with a New Game on September 16th

For those litigious patentees that have not paid much attention to the passage of the America Invents Act (AIA), or more particularly, the details of the new post grant validity trials of the Patent Trial & Appeal Board (PTAB), a rude wake up call may be headed in your direction. Starting this Sunday, petitions for Inter Partes Review (IPR) and the Transitional Program for Covered Business Method Patents (TPCBMP) will begin to be accepted by the USPTO.

IPR is available for all existing patents (but note the dead zone for very recently issued patents). This is a big change from the previous inter partes patent reexamination model which could not reach patents that stemmed from applications filed before November 29, 1999. TPCBMP will permit the presentation of invalidity arguments that are not based on patents and printed publications. Presentation of non-documentary evidence was not permitted under the old reexamination based system.

There are some standing requirements for petitioners, however, that may prevent some from filing a petition for IPR/TPCBMP. In IPR. standing considerations are primarily based upon certain parallel litigation factors. Namely, a petitioner that has filed a previous declaratory judgment of invalidity against a patent cannot later challenge the patent in IPR, nor can a petitioner that has been served with a complaint for infringement at least 12 months prior. As to TPCBMP, only those petitioners that have been sued or charged with infringement of a qualifying “business method” patent have the necessary standing.

Both IPR and TPCBMP proceedings will provide for limited discovery, be conducted exclusively by Administrative Patent Judges (APJs) of the PTAB, and completed within 12-18 months, by statute.

With the expanded scope and benefits of the PTAB trial proceedings, patentees that previously were unaffected by patent reexamination may find themselves on unfamiliar ground in a few days. So, if your patent becomes the subject of a petition for IPR or TPCBMP, now what?

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Continue Reading Your Patent Has Been Challenged at the PTAB….Now What?