Patent Trial & Appeal Board

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Patent Owner Sur-Replies on the Uptick

Back in June of 2016, the Federal Circuit issued its opinion in Genzyme Therapeutic Products LP v. BioMarin Pharmaceutical Inc.(here).  At the time I explained that Genzyme was a game-changer.  This was because it made clear that the trial portion of an AIA proceeding was an opportunity for both sides to build a record — not a mere analysis of the four corners of the trial petition.  As stated simply by the Court in Genzyme, “[t]he purpose of the trial in an inter partes review proceeding is to give the parties an opportunity to build a record by introducing evidence—not simply to weigh evidence of which the Board is already aware.” (emphasis added)  

As a reminder, an instituted AIA trial (absent a motion to amend) includes a single brief from each party, the petitioner filing the last brief as the party bearing the burden of demonstrating unpatentability.  

Since Genzyme, the Board has become far more comfortable with petitioners citing to new exhibits in petitioner replies (assuming such exhibits/arguments are in support of existing positions as opposed to altogether new theories).  At roughly the same time Genzyme issued, and since, the Board has been faulted for violating the Administrative Procedure Act (APA). For example, for failing to give parties a fair opportunity to respond to issues. (e.g., SAS Institute Inc., v. ComplementSoft LLC)  These developments are helping drive a more liberal perspective at the Board as to additional briefing possibilities for Patent Owners.  

A review of trial practices immediately before Genzyme, as compared to today, illustrates an increased willingness on the part of the PTAB to permit Patent Owner sur-replies at the close of the trial, effectively giving Patent Owners the last word in trial briefing.
Continue Reading Patent Owners Starting to Get the Last Word at the PTAB

Bill Would Effectively End PTAB

The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act was unveiled in the U.S. Senate this week.  This is the newest incarnation of a previously stalled bill known as the “STRONG Patent Act of 2015.”  The new bill, like its predecessor, proposes significant modifications to the patentability trial mechanisms of America Invents Act (AIA).  These modifications, if adopted, would for all practical purposes end AIA trial proceedings at the Patent Trial & Appeal Board (PTAB) — the apparent goal of the organizations backing this legislative effort.  

Notably, this same agenda prevented the 2015 bill from gaining any real traction. While the new bill does include some improved proposals for amending claim at the PTAB, oddly, it also doubles-down on its anti-PTAB agenda.

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Continue Reading Senate Bill Seeks to Thwart AIA Trials

High Court to Review Constitutionality of AIA Trials

The Supreme Court has had at least three occasions over the past 7 months to review the constitutionality of AIA trial proceedings — it declined all three invitations. Thus, the writing appeared to be on the wall when the same question was posed recently in Oil States Energy Services v. Greene’s Energy Group.  But, then the Federal Circuit wavered somewhat as to its conviction in its own precedent on point.  When asked to reconsider the debate as to whether a patent is purely a private right or public right (as previously decided in MCM Portfolio LLC v. Hewlett-Packard Co. et al.) the CAFC’s en banc denial of that request a few weeks ago (here) was a split decision.  (As a reminder, as a public right, a patent may be adjudicated by an Article I court).

Never one to shy away from a new opportunity to set the CAFC straight, the High Court suddenly became interested in the very same debate it only very recently passed over three times, granting certiorari yesterday. (Order here, briefs here)…
Continue Reading AIA Trials Unconstitutional? Don’t Bet on It

Preliminary Responses Accompanied by Declaration Evidence: Updated Results 

Back on May 1st of 2016, the Patent Trial & Appeal Board (PTAB) began to accept new testimonial evidence with patentee preliminary responses.  The PTAB implemented this change to address complaints of patentees who claimed they were disadvantaged by previous rules precluding such new evidence from accompanying a preliminary response. It was argued that the previous rules were especially imbalanced as almost all petitions were accompanied by petitioner declaration evidence, and that absent evidence in kind from patentees, institution was unavoidable.  I had my doubts as to whether this new mechanism would be the boon that patentees had hoped.

Now a year removed, some updated results.
Continue Reading Preliminary Response Evidence Should Focus on Technology

Focus of CBM Standing Analysis: Claim Language

Yesterday, the Federal Circuit denied en banc review in Secure Axcess LLC v. PNC Bank National Assoc., et al.  The rehearing request sought a full court review of America Invents Act (AIA) Sec. 18’s definition of a “business method patent.” This same issue was denied en banc review in April of this year in Google v. Unwired Planet. As in that decision, the dissents from denial raised the appeal bar debate now awaiting decision in WiFi One.
Continue Reading En Banc Denial of CBM Issue Raises Appeal Bar Debate

Recent Decision out of EDTX First to Get PTAB Estoppel Provision Correct

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).

As previously discussed, IPR estoppel has been unnecessarily complicated by the PTAB’s redundancy practice as discussed in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016

For example, the district court in Intellectual Ventures I LLC v. Toshiba Corp., Civ. No. 13-453, explained that, based on Shaw, it was necessary to interpret the scope of estoppel very narrowly, only applying estoppel to prior art or publications actually instituted in the IPR.  As this decision contradicts the plain language of the estoppel statute, it has been heavily criticized as too literal a reading of Shaw.  More recently, several other district courts have taken a more expansive view of Shaw.  But, in my opinion the first district to actually get it right, is, surprisingly, this week’s venue whipping boy— the Eastern District of Texas (EDTX).
Continue Reading PTAB Trial Estoppel Demystified in EDTX?

“All or Nothing” PTAB Institution Practice Coming Soon?

Today, the Supreme Court granted certiorari in SAS Institute Inc., v. ComplemenSoft LLC.   As previously explained, SAS argues that partial PTAB trial institutions are inconsistent with the controlling statutes of the America Invents Act (AIA).  That is, if the PTAB finds that at least one claim is demonstrated as likely unpatentable, the PTAB should institute trial for all petitioned claims.  

The dispute stems from an IPR filing of SAS in which it challenged all sixteen claims of ComplementSoft’s 7,110,936 patent.  Trial was instituted for claims 1 and 3-10, but claims 2 and 11-16 were denied institution.  On appeal to the Federal Circuit, 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.

Basically, SAS is seeking an end-run around the 314(d) appeal bar.  In other words, had the PTAB simply moved forward with trial on all claims, SAS would have been able to appeal any unfavorable decision on claims 2 and 11-16 (presumably would have been found not unpatentable at the close of trial) as part of its appeal from the Final Written Decision (FWD).  As it currently stands, 314(d) prevents the appeal of claims 2 and 11-16 since they were denied institution. 

Setting aside for another day the academic debate on the merits, should the high court accept SAS’s argument, Patentees will be significantly prejudiced.

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Continue Reading Eliminating Partial PTAB Institutions Will Undermine Trial Practice

Public vs. Private Rights: Another PTAB Distraction

We all remember the “Great BRI Debate” that was Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2143–44 (2016). PTAB critics argued that the Board’s “broadest” claim construction rubric was unfairly stretching claims to embrace prior art — resulting in inevitable invalidity determinations. And that since the PTAB was now in the business of litigation, they must follow litigation claim construction practices deemed more favorable to patent holders (especially since the PTAB amendment process, the justification for BRI, was argued as illusory).  

In reality, the difference between BRI and the district court Philips practices is the label used to reference each. Both constructions apply the ordinary and customary meaning of a claim term at the time of the invention from the perspective of one of skill in the art. The difference in outcomes is a simple reflection of expert agency’s technical insight, not a meaningful difference in claim construction frameworks. For this reason, and many others, Cuozzo failed.

Attempts to derail PTAB trial proceedings still persist some 5 years into its life. These attempts now include recycling failed constitutional arguments against Article I adjudication practices.
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Continue Reading Constitutional Challenges to PTAB Another Dead End

“Under This Section” a Limitation on the Scope of 314(d) Appeal Bar?

In today’s en banc argument (audio here) the Federal Circuit considered the whether it should overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) and hold that judicial review is available for a patent owner…

PTAB Ethics Accusations Are Misguided

Critics of the Patent Trial & Appeal Board (PTAB) are not hard to find — attorneys especially hate change.  Since the start of AIA trial proceedings in 2012, we have seen a never ending stream of challenges to these proceedings as “unfair,” “unconstitutional,” “violating due process,” and employing the “wrong litigation standards.” All of these challenges failed at either the Federal Circuit, Supreme Court, or both. (not at all surprisingly, given similar challenges to the patent reexamination system decades earlier)  

Perhaps as a result of the failed judicial challenges, criticism of the agency has now turned far more virulent and personal. 
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Continue Reading Ethical Guidelines for PTAB Judges