Inter Partes Review

Subscribe to Inter Partes Review via RSS

CAFC Decision Faults 103 Analysis on Reviewability Grounds

Last week, in In re Nuvasive, the Federal Circuit vacated the PTAB’s Final Written Decision from IPR2013-0056 involving Medtronic, Inc and NuVasive, Inc. (“NuVasive”) and remanded the case “for additional findings and explanations regarding the PHOSITA’s motivation to combine the prior art references.”  (2015-1670, at 13 (Dec. 7, 2016)).

But this case isn’t so much about about the law of obviousness but the adequacy of the appellate record under the Administrative Procedure Act (APA).

…
Continue Reading CAFC Faults IPR Record on APA Grounds

PTAB Specific Webinars Offered by USPTO

The full slate of 2017 Boardside Chat webinars have been announced for 2017. The BoardSide Chat series is a bi-monthly webinar that is free to the public. As with past webinars, the Board will share updates on topics related to ex parte appeals and AIA trials. There will be time during each webinar for audience questions and feedback.

Please see the schedule below:…
Continue Reading PTAB BoardSide Chats for 2017

Court Questions Reasoning in Achates Publishing

Today, in Click-To-Call Techs. v. Oracle Corp., (here) the Federal Circuit reconsidered its earlier decision (GVR Order) in light of the 35 U.S.C. § 314(d) discussion in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016).  In its earlier Click-to-Call decision, the Court found that issues arising under 35 U.S.C. § 315(b) (i.e,, one year time bar) could not be appealed, pursuant to 314(d).  In today’s non-precedential decision, the Court found that it could not reverse its earlier ruling since it was bound by its own precedent to the contrary.

However, the viability of the precedent was called into serious question.

…
Continue Reading CAFC Invites En Banc Review of IPR Appeal Bar

Dispute Over AIA Trial Institution Practices …Be Careful What You Wish For

Since the advent of AIA trials, opponents of the system have attempted to unravel them.  First, BRI was challenged, then 7th amendment constitutionality, and a host of other administrative issues; all have failed to date. Yet, a few challenges to fundamental AIA trial practices persist. Earlier this week, the Federal Circuit denied en banc review in one such remaining challenge, in SAS Institute Inc., v. ComplemenSoft LLC.  

As previously discussed, SAS challenged all sixteen claims of ComplementSoft’s patent 7,110,936 in inter partes review (IPR). Trial was instituted for claims 1 and 3-10, but claims 2 and 11-16 were denied institution. On appeal to the CAFC, SAS argued that it was inefficient to institute on only a subset of claims, and that the controlling rule authorizing partial institution (37 C.F.R. § 42.108(a) was in direct conflict with statutes 35 U.S.C. §§ 314(a)/318(a); the Federal Circuit disagreed (Judge Newman dissenting).

If it were agreed that the statute “at least one claim” is in conflict with the rule (perhaps on eventual appeal to the SCOTUS) is this really something petitioners or patentees should want?  

Probably not.
Continue Reading Are Partial AIA Trial Institutions a Good Thing?

Privilege Expanded to Cover Communications with Foreign Agents

Tomorrow’s Federal Register will include a NPRM to amend the rules of practice before the Patent Trial and Appeal Board (PTAB). The proposed rule recognizes that, in connection with discovery conducted in certain proceedings at the United States Patent and Trademark Office, communications between U.S. patent agents or foreign patent practitioners and their clients are privileged to the same extent as communications between clients and U.S. attorneys. (advanced copy here)

The rule would apply to Inter Partes Review (IPR), Post-Grant Review (PGR), the transitional program for Covered Business Method (CBM) patents, and derivation proceedings. This rule would clarify the protection afforded to such communications, which is currently not addressed in the rules governing Board proceedings at the USPTO.

…
Continue Reading PTAB to Adjust Attorney Client Privilege Rule

Preliminary Responses Accompanied by Declaration Evidence: Early Results 

Back on May 1st, the Patent Trial & Appeal Board (PTAB) began to accept new testimonial evidence with patentee preliminary responses.  The PTAB implemented this change to address complaints that patentees were disadvantaged by previous rules precluding such evidence from accompanying a preliminary response to the petition. It was argued that the previous rules were especially imbalanced as almost all petitions were accompanied by petitioner declaration evidence.  I had my doubts.

Now that we are some 5 months removed from the rule modification, early results are in.  

…
Continue Reading New PTAB Evidence Option Not Moving the Needle So Far

Fee Setting Authority to be Exercised for FY 2017 

The USPTO discussed its first ever fee increase under the fee setting authority of the America Invents Act (AIA) in November of 2015.  At the time, an initial proposal was provided to the Public Patent Advisory Committee (PPAC) for review.  While the initial hope was to have the proposed fee adjustments take effect on October 1st (start of FY 2017), significant stakeholder feedback and considerations have, understandably, slowed the rule making process.  At long last, the Notice of Proposed Rule Making (NPRM) issued today.  Since a Final Rule Notice must follow the NPRM, the proposed fee adjustments will not go into effect until calendar year 2017.

Notable Patent Trial & Appeal Board (PTAB) fee increases include:

…
Continue Reading PTAB Trial Fees Slated for Significant Increase in 2017

315(e) Estoppel as an Affirmative Defense

As most are aware, completed AIA trial proceedings have estoppel consequences for failed petitioners.  For example, an unsuccessful Inter Partes Review (IPR) petitioner of a given patent claim, real party in interest, or privy of the petitioner, is estopped from asserting that the same claim is invalid in a civil or ITC action on any ground that the petitioner raised or reasonably could have raised during the failed IPR. (35 U.S.C. § 315 (e)(2)). The same estoppel applies to requesting or maintaining a proceeding before the USPTO with respect to such a claim (35 U.S.C. § 315(e)(2)).  As can be appreciated from this statutory framework, whether before the courts or the Patent Trial & Appeal Board (PTAB), Congress was clearly interested in preventing patent challengers from getting the proverbial second bite at the apple.

Occasionally, however, a petitioner will uncover new prior art that could not have reasonably have been raised in the earlier PTAB proceeding  Petitioners seeking to overcome the affirmative defense of statutory estoppel may find that the courts are far more receptive in this regard than the PTAB.
Continue Reading Forum Selection & PTAB Estoppel Burden

Federal Holiday Treatment for Emergencies Not Unprecedented

As many recall, back on December 22nd, the USPTO’s e-filing systems crashed. The outage lasted several days as the replacement of large power supplies driving the systems was time consuming. To account for the inability to file electronically during this outage (the predominant channel for accepting filings from the public), the agency issued a notice explaining that December 22nd through 24th were “considered” to be federal holidays for filing purposes.  That is, any filings falling due on December 22-24th would be accepted as timely on the next business day. Given the Christmas holiday of Friday December 25th, and the following weekend, the next business day was December 28th.

Last week, Elm 3DS Innovations, sued the USPTO in the Eastern District of Virginia to enjoin the agency from conducting Inter Partes Review (IPR) of its patents. 3DS argues that the IPRs filed against it were due to be filed on December 24th by statute, and that the agency’s action to extend this due date was “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law, and otherwise in excess of statutory jurisdiction, authority, or limitations.” (complaint here)

3DS has an uphill battle.

The USPTO has consistently interpreted the relevant statute to cover non-postal emergencies. Even agencies without a statute conveying discretionary power for such emergencies have employed the same accommodation to extend statutory deadlines.

…
Continue Reading December E-Filing Accommodation Unlikely to Unravel IPRs

Amendment Practice to Remain Unpopular Regardless of In Re Aqua Products Outcome

Last Friday the Federal Circuit agreed to rehear In re Aqua Products Inc. The en banc rehearing will consider amendment practices of the Patent Trial & Appeal Board (PTAB) in AIA trial proceedings. Specifically, the Court will explore where the burdens of persuasion and production properly lie for motions to amend. To date the Court has repeatedly found the burden of persuasion to rest with the patentee for motions to amend.

While it appears likely that the Court will shift burdens away from patentees seeking amended claims before the PTAB, practically speaking, such an outcome is unlikely to make much of a difference. At the end of the day, amendments will always remain highly unattractive for patentees at the PTAB.
Continue Reading CAFC En Banc Review Unlikely to Spur PTAB Amendments