Patent Trial & Appeal Board

New SOPs Demystify Internal Practices & Consolidate PTAB Policy Control to Director

The PTAB has substantially revised its Standard Operating Procedures (“SOPs”) regarding paneling of matters before the PTAB (SOP1) and precedential and informative decisions (SOP2).

SOP1 largely explains existing internal processes relating to assignment/reassignment of judges in the interests of increasing transparency, predictability, and reliability across the USPTO. More specifically, revised SOP1 explains the procedures for panel assignment and for informing parties regarding panel changes. It also explains the process for designating panels with more than three judges, and notes that such panels should be rare and will only occur with the approval of the Director.(here)

Revised SOP2 is likely to draw the most interests as it creates a Precedential Opinion Panel (POP) that effectively moves the previous PTAB precedent setting power away from the judges to the domain of the agency executives.  Continue Reading PTO Director to Drive PTAB Precedent Going Forward

Rebutting the Presumption of Unreasonability

Given the complications associated with amending litigated claims, amendment is still relatively rare at the Patent Trial & Appeal Board (PTAB).  Yet, there remain Patent Owners willing to amend claims in limited scenarios. For these Patent Owners, the Board has provided some helpful guidance post Aqua Products.  As a reminder, newly designated precedent Western Digital Corp. v. SPEX Techs., Inc has replaced now de-designated precedent/informative decisions of MasterImage 3D, Inc. v. RealD Inc.,Case IPR2015-00040 (PTAB July 15, 2015) (Paper 42) and Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027 (June 11, 2013) (Paper 26).

However, Aqua Products did not overrule all aspects of these earlier decisions despite their de-designations. So, the question remains as to the continued viability of some of these earlier positions — such as the standard for assessing a “reasonable number” of substitute claims.

In a decision issued today, the Board emphasized that adding claims beyond a 1-1 substitution creates a presumption of unreasonability.  And, that rebutting that presumption may not necessarily require a showing of patentable distinctness between multiple substitutes, as previously explained in Idle Free. Continue Reading PTAB Debates Standard for Reasonable Number of Substitute Claims

Claimed Ranges Overlapping with Prior Art Shift Burden of Production to Patent Owner

Since the Federal Circuit’s decision in Magnum Oil, the Patent Trial & Appeal Board (PTAB) has been mindful that the ultimate burden of persuasion must remain with the patent challenger. While this general rule guides most proceedings at the PTAB, as the Federal Circuit reminded the Board today, there are exceptions for the burden of production.

In E.I. Dupont De Nemours v. Synvina C.V. the Court considered whether a claimed range shown to be overlapping with that of the prior art creates a rebuttable presumption of obviousness. The Court reiterated that it did, and that once an overlap is shown by a Petitioner, it falls to the Patent Owner to come forward with appropriate rebuttal evidence. Continue Reading CAFC Explains PTAB Burden Shift for Claimed Ranges

PTAB Trials 2018 September 21st in NYC

PLI’s flagship PTAB Trials 2018 will be held next Friday September 21st in New York City.  If you can’t get to NYC in person, strongly consider the live webinar of this full-day event. (register here)  PLI’s comprehensive program is the longest running and most widely attended PTAB-related CLE in existence. Rather than just exploring PTAB trial practices, this program has become known for its holistic analysis of the PTAB and its impact on the patent system.  Noted speakers this year include former CAFC Chief Judge Paul Michel.

This year’s program also adds a unique segment dedicated to licensing and monetization strategies, Northeast Corridor: Bio/Pharma & the PTAB, as well as PTAB-centric patent prosecution practices. I am pleased to continue to chair this program alongside Robert Greene Sterne of the Sterne Kessler firm. 7.0 CLE credits are offered in most jurisdictions.

Hope to see you next week.

Stage of Litigation & Similarly Situated Litigants Now General Plastic Factors?

As I have mentioned on a few CLE panels as of late, the recent changes to the Patent Trial & Appeal Board’s (PTAB) Trial Practice Guide invite parties to suggest additional General Plastic factors.  These factors are applied by the Board to determine whether to exercise its discretion to deny institution under § 314(a) in applicable cases.  With the efficacy of 325(d) now muted after SAS (given it’s ground-by-ground based application), the potential “kill shot” offered by 314(a) has attracted more attention in recent Patent Owner Preliminary Responses.

With the new Trial Guide update barely a month old, the Board has already begun to expand its General Plastic factors. Two September decisions highlight the degree to which the Board may be more open to considering parallel litigation dynamics as additional factors. Continue Reading PTAB Expands Equitable Considerations to Deny AIA Trial Petitions

The Impact of SAS Institute on Statutory Estoppel

IPR estoppel is established under 35 U.S.C. § 315(e)(2), which provides that “the petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . may not assert . . . in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” (emphasis added). Prior to the Supreme Court’s decision in SAS Institute, the courts did not apply statutory estoppel to grounds upon which the Patent Trial & Appeal Board (PTAB) refused to institute trial. The reasoning was that statutory estoppel under 35 U.S.C. § 315(e)(2) only applied to grounds adjudicated in a Final Written Decision (FWD).  As such, grounds shaken out (i.e., partial institutions) prior to trial could not be covered by such estoppel.

Post-SAS, of course, there are no longer partial institutions and this previous distinction simply goes away.  But what happens to those partially instituted cases that remain pending, can a petitioner side-step the revived SAS grounds in the hope of holding onto this estoppel exception?  Continue Reading Failure to Pursue SAS Grounds Leads to Statutory Estoppel

Upcoming PTAB-Related CLE Options

With the summer winding down, it is time to start looking forward to fall. September offers a number of great CLE options.

First up, on September 12th (@1-230PM EST) is the Strafford webinar entitled: Evolving PTAB Trial Practice: Navigating Complex Procedural Rules. This program offers 1.5hrs of CLE and will cover a broad range of PTAB trial practices, including recent practice changes and those on the immediate horizon.

For those seeking a deeper dive, PLI’s flagship PTAB Trials 2018 will be held on Friday September 21st in New York City. If you can’t get to NYC in person, strongly consider the webinar of this full-day event. (register here) PLI’s comprehensive program is the longest running and most widely attended PTAB-related CLE in existence. Rather than just exploring PTAB trial practices, this program is known for its 360° degree analysis of the PTAB on the overall patent ecosystem and includes such noted speakers this year as former CAFC Chief Judge Paul Michel. This year’s program will provide the first, deep-dive analysis of the recent Trial Practice Guide changes as well as other proposed and expected USPTO rule packages.

This year’s program also adds a unique segment dedicated to licensing and monetization strategies, Northeast Corridor: Bio/Pharma & the PTAB, as well as PTAB-centric patent prosecution practices. I am pleased to continue to chair this program alongside Robert Greene Sterne of the Sterne Kessler firm. 7 CLE credits are offered in most jurisdictions.

Hope to see you at one of these upcoming events.

Agency Still Responding to Criticism on Amendment Difficulty

A constant criticism of the Patent Trial & Appeal Board (PTAB) has been the perceived difficulty in amending claims in an AIA trial proceeding. In response, the PTAB has pointed out that the vast majority of motions to amendment fail to distinguish over the art of record.  That is, the Board is not applying Draconian procedural requirements. Rather, in my experience, Patent Owners are attempting to skirt an intervening rights defense with a cosmetic change, or seeking to maintain their infringement case with an incremental change in claim scope.  Such amendments routinely fail to clear the art of record (or supplemental art that is easily located). Not appreciating the real-life practicalities of amendment practice, many critics hoped that the shift in burden post Aqua Products would now favor amendments. While there has been a slight uptick for 2018, as expected, Aqua Products is not moving the needle.

Recent stats from the PTAB demonstrate that while amendment is being attempted slightly more often post-Aqua, the outcomes are no more favorable to Patent Owners. Continue Reading Amendments at the PTAB Hamstrung by Litigation Realities

“Without Prejudice” Dismissal of Earlier Complaint Does not Restart 315(b) Clock

As I predicted it would back in May, the Federal Circuit has now reversed the long-standing practice of the Patent Trial & Appeal Board (PTAB) to accept certain IPR petitions outside of the 1-year window of 35 U.S.C. § 315(b).  While 315(b) precludes petitions filed more than one year after service of a complaint of infringement for a subject patent, the Board had consistently held that where a first-filed complaint (outside the window) was dismissed without prejudice, that the one-year window would essentially reset.  In other words the PTAB adopted the legal principal that a voluntary dismissal of a complaint renders the earlier proceeding a nullity and leave the parties as if the action had never been brought.

In its en banc ruling today in Click-to-Call v. Ingenio (here), the Court reversed the Board’s longstanding practice. Continue Reading CAFC Reverses Long Standing PTAB Precedent on 1-Year Window

Is The Tide Turning for Patent Owners?

The Patent Trial & Appeal Board (PTAB) has issued an update to its Trial Practice Guide. The update includes notable practice changes that favor Patent Owners. Going forward, Patent Owners will have the last word in briefing, and at oral argument.  These changes, along with the imminent switch to a Phillips claim construction and increased feedback from the Federal Circuit are driving welcome changes at the PTAB for Patent Owners.

Please join me for an interactive webinar discussion of these changes next Monday, August 20th @1PM (EST). Register (here).  The webinar will identify key takeaways from these changes, especially for Bio/Pharma Patent Owners, and offer insights and discuss possible further practice changes that will occur in the weeks/months ahead.  My co-presenter for this webinar will be Charlotte Jacobsen, a partner in Ropes & Gray’s life sciences intellectual property litigation practice.

The formal portion of the webinar will begin at 1PM Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period. To attend the free webinar please sign up via the link above. You will receive a registration confirmation email immediately. One hour prior to the webinar you’ll receive another email with a link and instructions for joining the presentation. CLE credit will be provided (CA, NYC, VA).