Patent Trial & Appeal Board

September Webinar to Focus on Expected Changes to PTAB Practice

This month’s edition of the PatentsPostGrant.com free webinar series will be held on Thursday September 28th @12:30 (EST). The September webinar is entitled: The Evolution of PTAB Trial Practice (speakers: Scott McKeown & Gaby Higgins). As the title suggests, the webinar will cover the expected impact and possible changes resulting from:

Register (HERE).

The formal portion of the webinar will begin at 12:30 Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period. To attend the webinar please sign up via the link above. You will receive a registration confirmation email immediately. Two hours 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).

Oil States/CAFC to Unravel “Litigation” Premise

Sovereign immunity from proceedings of the Patent Trial & Appeal Board (PTAB) has become inextricably linked with the Oil States debate now before the Supreme Court. That is, the 7th amendment argument in Oil States and the 11th amendment argument for sovereign immunity at the PTAB are both tied to the same basic, threshold premise — IPR is a trial proceeding akin to an Article III lawsuit.

In Oil States, the “trial argument” is made to distinguish IPR proceedings from patent reexamination. It is argued that because an IPR is more trial-like compared to the earlier, examination based system, a jury trial is now required, consistent with the 7th Amendment.

In the sovereign immunity context, immunity applies if an administrative proceeding is similar to civil litigation. Fed. Mar. Comm’n v. S.C. State Ports Auth., 535 U.S. 743 (2002). But, some judges of the CAFC have already signaled a willingness to unravel this “IPR is a trial” premise, and it is my expectation that Oil States will follow suit. Continue Reading Sovereign Immunity at the PTAB a Temporary Phenomena?

Boardside Chat Tomorrow

Tomorrow, Tuesday, September 12, 2017 from 12-1 p.m. ET the Patent Trial & Appeal Board (PTAB) will conduct a special “Boardside Chat” in which representatives from AIPLA, IPO, ABA, PTAB Bar Association, and Federal Circuit Bar Association will interview the Chief Judge on the 5th year anniversary of the PTAB.

The program is free to attend.  Discussion topics include PTAB procedures, the latest statistics, and new developments.  The program also will include an opportunity to “Ask the Chief Judge” your questions.

Webinar access information is below.

Event: PTAB Boardside Chat Webinar

Webinar Access link: https://uspto-events.webex.com/uspto-events/onstage/g.php?MTID=e5931807cab2f9531c78d30f611670e0f

Date and time:Tuesday, September 12, 2017 from 12-1 p.m. ET

Duration: 1 hour

Event number: 394 265 268

Event password: 3MfdVtba

Audio conference: Call-in toll number (US/Canada): 1-650-479-3208

Access code: 394 265 268

 

PTAB Precedent (Not Surprisingly) Embraces CAFC Precedent

As I pointed out last week, it is a heavy lift for the Patent Trial & Appeal Board (PTAB) to designate a precedential decision.  For this reason, nothing but the most straightforward of issues can be decided and designated “precedential.”

The PTAB issued a prime example of a seemingly straightforward precedential decision a few days ago in Ex parte McAward, Appeal 2015-006416 (PTAB Aug. 25, 2017), Section I.B. (here). This PTAB precedent makes clear that the USPTO assesses indefiniteness pursuant to the Federal Circuit’s guidance in In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).

While some have expressed shock at the PTAB pronouncing a different standard than that expressed in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), this is just a restatement of the Board’s status quo since the Packard decision. (It is not exactly shocking that the Board is following the guidance of its reviewing court).

The more interesting issue is whether the Court’s reasoning in Packard is equally applicable to AIA trial proceedings? Continue Reading New PTAB Precedent Endorses In re Packard….But For How Long?

Boardside Chat Today

As discussed yesterday, evidentiary issues are handled quite differently at the PTAB as compared to the district court. Right on cue, the PTAB will host a Boardside Chat today to address common evidentiary issues in AIA trial proceedings from 12-1 p.m. ET.

The webinar panel will include Administrative Patent Judges Medley, Chang, and Cox.  The discussion will cover common evidence issues that occur in AIA trial proceedings before the Board. The program is free to attend.

Webinar access information is below.

Event: PTAB Boardside Chat Webinar

Registration available online

Date and time: Thursday, August 31, 2017 from 12-1 p.m. ET

Duration: 1 hour

Event number: 397 231 324

Event password: Typ6Pg2q

Audio conference: Call-in toll number (US/Canada): 1-650-479-3208

Access code: 397 231 324

 

Preserving The PTAB Trial Record

An objection operates to preserve errors in admitting evidence. At the PTAB, the manner and timing of making evidentiary objections is governed by agency rule rather than the Federal Rules of Evidence (FRE). 37 C.F.R. § 42.64.  An Offer of Proof, on the other hand, preserves errors in excluding evidence. But, to date, Offers of Proof have not been a recognized mechanism of PTAB trials — not formally anyway.  This is despite the fact that there is no agency rule on point to displace FRE 103, and the FRE apply to PTAB trials. 37 C.F.R.§ 42.64.

That is not to say that PTAB litigants are unable to otherwise preserve the record when evidence is denied entry, or that the need to preserve such is anywhere near as pronounced as compared to the district court. Only that PTAB litigants may have to work a little harder to preserve such issues for appeal. Continue Reading PTAB Offers of Proof?

PTAB Expanded Panels Impact Less Than 1% of All AIA Trials

Last week the Court of Appeals for the Federal Circuit (CAFC) issued its decision in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. (here)  The decision affirmed the USPTO’s Patent Trial & Appeal Board cancellation of certain claims of Nidec’s U.S. patent 7,626,349 (IPR2014-01121 & IPR2015-00762). In this regard, the opinion was rather unremarkable. Of particular interest to PTAB critics, however, was the Court’s discussion of the Board’s expanded panel practices in its concurring opinion.

Although conceding it had no impact on the outcome of the case, the concurrence took issue with the Board’s expansion of a rehearing panel for the stated purpose of reversing the earlier decision.  That is, in order to consistently treat questions of issue joinder under 35 U.S.C. § 315(c), the PTAB expanded a panel to include judges that had ruled differently on the same question of statutory interpretation. As a result, the expanded panel reversed the earlier decision and found issue joinder to be embraced by 315(c). The Federal Circuit signaled a strong distaste of such agency practices.

Critics were quick to lambaste the PTAB’s expanded panel process in Nidec as evidence of a crooked process and an anti-patent bias.  Of course, anyone that has followed this blog knows that to be false. Continue Reading PTAB Expanded Panels: Fact Check

Post-Grant Patent Trials 2017 & More

For those seeking PTAB related CLE/education the fall, there are a number of great programs on the immediate horizon.

This September, the most widely attended PTAB CLE program returns, the Practicing Law Institute’s USPTO Post-Grant Patent Trials 2017. (register here)

Sept. 25, 2017, New York, NY (webcast available)
Oct. 25th 2017, San Francisco, CA (webcast available)
>I am pleased to return as chair of this program along with Rob Greene Sterne of Stern Kessler Goldstein & Fox. This day-long CLE event will be offered in both New York and San Francisco (also webcast). New for this year, the New York program will include a segment entitled Northeast Corridor: Bio/Pharma at the PTAB. Also new this year, San Francisco will include a special 2-hour segment entitled: Patent Monetization in Silicon Valley: Licensing Blues & Navigating PTAB Roadblocks. These programs are always the highlight of the CLE year.

Some additional events this fall with offer more academic/policy based insight to the PTAB and beyond.

First up is the Chicago-Kent College of Law’s: The Power of PTAB: The New Authority in Patent Law.  (registration not yet open)

Oct. 20th 2017, Chicago, Ill.
This program will explore facets of the PTAB’s expanded powers under the America Invents Act, including related to PTAB procedures, claim construction, and decisions. The conference will facilitate comments for the USPTO’s PTAB Procedural Reform initiative and will also generate articles for a symposium issue of the Chicago-Kent Journal of Intellectual Property.

For additional policy discussions on the current legal and political climate for patent law at large, IAM’s Patent Law & Policy 2017 returns to Washington D.C. (register here)

Nov. 14th, Washington, D.C.
This program focuses on the trends and changes across the patent landscape of the previous year, particularly the impact of political interests and stakeholder agendas as drivers of policy going forward under the Trump administration. This program has become a must event for anyone interested in patent law policy, legislation and rule-based initiatives.

I hope to see you at an upcoming event.

Article III Standing Only Necessary for Party Invoking Authority of Federal Courts

Last week, I analyzed the government’s arguments supporting Article III standing for intervenors in Knowles Electronics v. Matal. In that case, the panel questioned whether the government had Article III standing to intervene in a case where the original appellee dropped out. As to the arguments presented by the government, I explained that I found the most compelling argument to be that the agency can piggyback off of the Article III standing of the appellant as the standing inquiry is properly directed at those who invoke the court’s jurisdiction.

Yesterday, two of the three judges (Newman, Clevenger) on the Knowles panel agreed with the above “piggyback” argument in Personal Audio, LLC v. Electronic Frontier Foundation.
While Personal Audio did not address the specific intervenor scenario of Knowles, it did address standing of a party other than the Appellant.

The Appellee, Electronic Frontier Foundation (EFF) , is a non-profit organization that seeks to protect the public interest of consumers of digital technology.  EFF sought Inter Partes Review (IPR) of Personal Audio’s (8,112,504) ‘504 patent after a well-publicized campaign in which the ‘504 patent was used to target podcasting programs around the country. EFF was successful in securing the cancellation of the challenged patent claims at the Patent Trial & Appeal Board (PTAB).  On appeal, the question of EFF’s standing as appellee was raised by the panel, and additional briefing was ordered (including amicus filings).

In a few short paragraphs, the Court dispensed the EFF standing issue (here), concluding:

Here, the party invoking judicial review is Personal Audio; it is apparent that Personal Audio, on cancellation of its patent claims by the PTAB, has experienced an alteration of “tangible legal rights . . . that is sufficiently ‘distinct and palpable’ to confer standing under Article III.” Virginia v. Hicks, 539 U.S. 113, 121 (2003) (internal citations omitted). With Article III satisfied as to the appellant, EFF is not constitutionally excluded from appearing in court to defend the PTAB decision in its favor.

Personal Audio appears to have all but mooted the remaining briefing in Knowles on intervenor standing.

What Exactly is the “Thrust of the Rejection?”

Every so often a decision comes out of the USPTO’s Patent Trial & Appeal Board (PTAB) or the Federal Circuit that has immediate value for patent prosecutors. For example, back in June, the Federal Circuit analyzed the degree of corroboration necessary for an In re Katz declaration.  Earlier this week, the Court reviewed an appeal from an inter partes reexamination in Honeywell Intl. Inc. v. Mexichem Amanco Holding S.A. de C.V. et al. to determine whether or not the Board’s reliance on a reference different from those of the patent examiners underlying rejections constituted a “new rejection.”  The Court’s discussion, especially that found in the dissent, may help shed light on this somewhat amorphous standard.

While a new rejection analysis may appear to be limited in relevance to patent prosecution and appeals before the PTAB, this same analysis can be helpful in navigating Administrative Procedure Act (APA) compliance in AIA trial proceedings.
First, the “new rejection” framework stems from notice and due process concepts of the APA. As discussed previously in the AIA trial context, 5 U.S.C. § 554(b)(3) prevents the Patent Trial & Appeal Board (PTAB) from introducing new claim interpretation theories without notice, or opportunity to respond.  In patent prosecution and appeals before the PTAB, this procedural concern often manifests itself as a change in a rejection that so changes the “thrust” of the earlier positions that it would violate due process to close prosecution or enter an appeal decision absent further opportunity for the Applicant/Appellant to respond on the merits.

Turning back to Honeywell, the Federal Circuit vacated and remanded the PTAB’s decision rejecting numerous claims in two merged inter partes reexaminations. Part of the reason for the majority’s remand was that the PTAB relied on a new ground of rejection.  Specifically, the PTAB rejected Honeywell’s evidence of unexpected results in light of the “”Omure reference, on the grounds that this reference demonstrated the Patentee had not established a nexus to its secondary indicia evidence.  As noted by the majority, Omure—while briefed by the parties—was not explicitly relied upon by the Examiner. Thus, the Court concluded that the PTAB’s reliance on Omure constituted a new ground of rejection in violation of the APA. (not a “new ground” per se, more a “new evidentiary” basis for denying the patentee’s argument)

Judge Wallach dissented from this part of the opinion, concluding that the PTAB did not issue or rely on a new ground of rejection.  The dissent (here) noted that:

When considering whether the [PTAB] issued a new ground of rejection, the ultimate criterion of whether a rejection is considered new in a decision by the [PTAB] is whether applicants have had fair opportunity to react to the thrust of the rejection.

Which begs the question: What exactly is the “thrust” of a rejection?

Judge Wallach explains that the PTAB is not limited to reciting and agreeing with the Examiner’s rejection verbatim, and may further explain the rejection and respond to parties’ arguments.  Dissent Op. at 2.  On the other hand, if the PTAB finds facts not found by the examiner regarding the differences between the prior art and the claimed invention, and these facts form the basis for the PTAB’s rejection, then the PTAB improperly enters a new ground of rejection.  Id.

Applying this reasoning to the facts of Honeywell, Judge Wallach found the majority’s reliance on statements by the PTAB that they “disagreed” with the Examiner were not sufficient to rise to the level of a new rejection.  Rather, having concluded that the record supported a finding of prima facie obviousness, the PTAB next considered evidence of secondary considerations.  The Board concluded there was no nexus, without relying on Omure.  Thus, according to Judge Wallach, the “PTAB’s analysis of secondary considerations does not include an improper new ground of rejection.”  That is, although the PTAB discussed Omure in other portions of its analysis in rejecting Honeywell’s secondary considerations argument, it was not the principal evidence upon which the PTAB’s rejection was based, and thus should not be considered a new ground of rejection.  Rather, the PTAB was simply providing a more thorough explanation of the Examiner’s conclusion, and limiting the PTAB to “verbatim repetition of the examiner’s office actions…would ill-serve the [PTAB’s] purpose as a reviewing body.”

The takeaway here is that the “thrust” of the rejection balances the interests of notice and due process with the administrative flexibility necessary to explain decisions differently.  Where the “thrust” may be argued to have shifted will depend upon whether or not the difference in explanation is supplementary in nature, or altogether new, principal evidence. As demonstrated by Honeywell reasonable minds may differ in this analysis.