Patent Trial & Appeal Board

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Burden of Persuasion to Demonstrate Unpatentability on Petitioner

The United States Patent and Trademark Office (USPTO) has issued a Notice of Proposed Rulemaking (NPRM) to allocate the burdens of persuasion on motions to amend in AIA trial proceedings before the Patent Trial and Appeal Board (PTAB).  The NPRM proposes that a petitioner bears the burden to show the unpatentability of substitute claims proposed in a motion to amend; a patent owner bears the burden to show that a motion to amend complies with certain statutory and regulatory requirements; and the Board may, in the interests of justice, make a determination regarding the patentability of substitute claims based on the record in the proceeding regardless of the burdens assigned to any party.

The NPRM basically follows the en banc decision in Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), in which a majority of the judges concluded that the Office had not adopted a rule allocating the burden of persuasion with respect to the patentability of proposed substitute claims. In light of Aqua Products, as well as public comment provided in response to a Request for Comments, the Office proposes to issue specific rules applicable to motions to amend.
Continue Reading Resolving AIA Amendment Burdens Unlikely to Move the Needle at the PTAB

Federal Gov’t & Federal Contractors in the Court of Federal Claims – A Legal Relationship?

Federal government contractors are protected from patent infringement suits when infringing activities are performed pursuant to a contract with the Federal Government. 28 U.S.C. § 1498(a).  Under § 1498, rather than sue such contractors directly in a Federal District Court, patentees must instead file a suit against the United States in the Court of Federal Claims.  Typically, contractors will intervene thereafter and become third party defendants.

When these contractors lodge IPR petitions with the PTAB, they often take the view that since they were never served with a “complaint for infringement,” that the one year anniversary of the 1498 complaint does not preclude such filings under 35 U.S.C. § 315(b).  But a recent case will explore the legal relationship of the Federal Government to its contractors, and whether at least a privity relationship exists for purposes of applying 315(b) to the complaint anniversary date.
Continue Reading PTAB Considers RPI/Privy Relationship of Federal Gov’t in Related Court of Federal Claims Dispute

Informative Decisions Address Design Choice Considerations

Today, the Patent Trial & Appeal Board (PTAB) designated two ex parte appeal decision informative, Ex parte Spangler, Appeal No. 2018-003800 (Feb. 20, 2019) & Ex parte Maeda, Appeal No. 2010-009814 (Oct. 23, 2012)

The Spangler decision (here) affirmed an examiner’s obviousness rejection determining that…

October Boardside Chat Looks Back at FY2019

Today, from noon to 1 p.m. (EST), the Board will conduct its October Boardside Chat.  The October discussion will cover 2019 changes to ex parte appeal and AIA trial procedures.

The FY2019 changes include the Motion to Amend pilot program, latest updates to the AIA Trial Practice Guide,…

Director Determinations Cannot be Made by an AIA Trial Panel

Motion practice in AIA trial proceedings is typically limited to the handful of motions that may be filed as  a matter of right. (Pro hac, Joinder, Exclude, Amendment).  Prior authorization must be received from the assigned APJ panel to file any other motion.  Such authorization is usually pursued via a party teleconference with the Board.  To date, these teleconferences have been conducted as a motion hearing of sorts where the panel considers the merits of the requested relief before granting authorization to file.  In denying authorization to file, the Board essentially decides the merits of the requested motion.  Recently a non-precedential decision of the  Federal Circuit has frowned upon this practice, finding that Motions for Additional Discovery may be filed as a matter of right.

In a case yesterday, the Court again knocked the practice of deciding issues that have not been fully developed via motion practice.
Continue Reading CAFC Again Faults PTAB for Denial of Motion Practice

October Boardside Chat to Cover FY2019 PTAB Changes

With today being the last day of FY2019, the October Boardside Chat will look back at all of the 2019 changes to ex parte appeal and AIA trial procedures. The webinar is scheduled for October 10th, from noon to 1 p.m. (EST).

The FY2019 changes include the…

Agency Discretion May Permit Joinder of New Party Claims

Issue joinder practice at the Patent Trial & Appeal Board (PTAB) has had a storied history to date.  As a reminder, the debate at the agency (spawning the now infamous “panel stacking” decisions) has been the proper scope of “joinder” under 35 U.S.C. § 315(c).  That is, “can an existing petitioner (party) properly “join” its own proceeding to add a new issue to that proceeding, or is this statute limited to more traditional notions of party joinder?”

From the agency’s perspective, this issue was finally settled by the Precedentiial Opinion Panel (POP) decision in Proppant Express Investments v. Oren Technologies, Case IPR2018-00914 (PTAB Mar. 13, 2019) (Paper 38)  In this decision, the POP held that 35 U.S.C. § 315(c) provides discretion to allow a petitioner to be “joined” to a proceeding in which it is already a party, and provides discretion to allow joinder of new issues into an existing proceeding (here).

Since Proppant, the Federal Circuit  has had an opportunity to consider PTAB issue joinder practices  in Facebook, Inc. v. Windy City Innovations, LLC. , and judging by the oral argument, is not in favor of endorsing this practice.  But, the USPTO has indicated in a brief (amicus brief) submitted post Facebook oral argument, that regardless of the outcome in Facebook that issue joinder practice may live on. 
Continue Reading PTAB Issue Joinder Could Live On Despite CAFC Outcome

Unrebutted Secondary Indicia Considered in Assessing Becton-Dickinson Factors

The submission of so-called “objective indicia of non-obviousness” at the PTAB is rarely effective, especially in the predictable arts (i.e., mechanical/electrical).  This is because the most common form of such evidence, “commercial success” is often difficult to tie to any particular claim feature (unlike drug formulations, for example).  That said, as a Graham Factor that is assessed in an obviousness determination, the failure to address previously established indicia could prove fatal to your petition. 
Continue Reading PTAB Denies Petition Overlooking Objective Indicia of Non-Obviousness

September Webinar to Focus on RPI/Privy Issues

The September edition of the PatentsPostGrant.com webinar series will be held this Wednesday September 18th@ 2-3PM (EST). The September program is entitled Avoiding PTAB Pitfalls: Indemnification & Joint/Common Interest Agreements.

The webinar will explore the increasing complexities of real party in interest (RPI) and privity determinations before…

PTAB Designates Two Older Decisions as Precedential, Updates Hearing Rooms/Notices

The Patent Trial & Appeal Board (PTAB) has designated two more decisions precedential. The first addresses the 315(b) fling deadline, while the other pre-institution statutory disclaimer.

In addition to expanding precedent, the Board has also expanded hearing room space and options.
Continue Reading PTAB Adds Precedent & Hearing Room Features