Patent Trial & Appeal Board

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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?

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.

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Continue Reading Upcoming PTAB & Patent Policy CLE (Fall ’17)

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.

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Continue Reading Separate Article III Standing Not Necessary for PTAB Appellees

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.

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Continue Reading Patent Prosecutor Alert: When is a Rejection a New Rejection?

Assignor Estoppel Not an Exception to 311(a)

The Patent Trial & Appeal Board (PTAB) has designated the following decision as precedential: Athena Automation Ltd v. Husky Injection Molding System Ltd., IPR2013-00290, Paper 18 (PTAB Oct. 25, 2013), Section II.A. (here)

Athena holds that the doctrine of assignor estoppel is not an exception…

USPTO Explains Intervenor Standing

Some weeks back in Knowles Electronics v. Matal, the Federal Circuit, sua sponte, asked the following of the parties (order here):

When the prevailing party in an inter partes reexamination proceeding before the USPTO’s Patent Trial and Appeal Board (“Board”) declines to appear before this court to defend the decision below, is the USPTO’s Director required to possess Article III standing in order to intervene?

If yes, does the Director possess such standing in this appeal?

Additionally, if the Director does in fact possess standing; must the Director defend the Board’s decision? Alternatively, what are the ramifications if the Director declines to defend the Board’s decision?

The debate has obvious ramifications for appeals from PTAB trial proceedings. Whether intervening when a petitioner drops out/settles its dispute with a patentee, or intervening on appeals deemed to touch upon a significant practice issues, USPTO intervention is quite commonplace. Indeed, the only AIA trial dispute decided by the Supreme Court was a case in which the USPTO intervened at the appellate level, In re Cuozzo Speed Technologies.

Yesterday, the government explained the origin of its standing, as well as its propriety under Article III.
Continue Reading USPTO Intervenor Standing in PTAB Appeals

Failure to Argue Differing Claim Language of Similar Claims Haunts Appellant

PTAB practitioners must always be mindful of the Board’s longstanding practice to treat grouped claims as standing or falling together. That is, claims should be argued separately where the claims are phrased similarly, but with some deliberate grammatical or additional term difference to distinguish scope.  In those cases, it is important to discuss the implications of the grammatical differences. Simply reciting a claim limitation, and asserting that the limitation is/is not found in the prior art, is not taken by the Board as a separate argument for patentability.

That said, such layered arguments may fall prey to the tight space constraints in AIA trial proceedings where more pressing arguments are necessary.  

For example, one of the more particularly tricky aspects of AIA trial practice prior to May of 2016— at least for petitioners— was fitting all of petitioners arguments within the fifteen pages allocated for a Petitioner Reply by the PTAB.  As a result of the limited real estate, some petitioner arguments that might have been otherwise made were often cut for space constraints. Fortunately, in May of 2016, the fifteen page limit was increased to twenty-five pages.

Yesterday’s decision of the Federal Circuit emphasized the risks of claim grouping; perhaps a reflection of the earlier AIA trial briefing constraints.

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Continue Reading CAFC Finds Forfeit of Half-Win Before PTAB