Patent Trial & Appeal Board

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Court Questions Reasoning in Achates Publishing

Today, in Click-To-Call Techs. v. Oracle Corp., (here) the Federal Circuit reconsidered its earlier decision (GVR Order) in light of the 35 U.S.C. § 314(d) discussion in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016).  In its earlier Click-to-Call decision, the Court found that issues arising under 35 U.S.C. § 315(b) (i.e,, one year time bar) could not be appealed, pursuant to 314(d).  In today’s non-precedential decision, the Court found that it could not reverse its earlier ruling since it was bound by its own precedent to the contrary.

However, the viability of the precedent was called into serious question.

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Continue Reading CAFC Invites En Banc Review of IPR Appeal Bar

Dispute Over AIA Trial Institution Practices …Be Careful What You Wish For

Since the advent of AIA trials, opponents of the system have attempted to unravel them.  First, BRI was challenged, then 7th amendment constitutionality, and a host of other administrative issues; all have failed to date. Yet, a few challenges to fundamental AIA trial practices persist. Earlier this week, the Federal Circuit denied en banc review in one such remaining challenge, in SAS Institute Inc., v. ComplemenSoft LLC.  

As previously discussed, SAS challenged all sixteen claims of ComplementSoft’s patent 7,110,936 in inter partes review (IPR). Trial was instituted for claims 1 and 3-10, but claims 2 and 11-16 were denied institution. On appeal to the CAFC, 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 (Judge Newman dissenting).

If it were agreed that the statute “at least one claim” is in conflict with the rule (perhaps on eventual appeal to the SCOTUS) is this really something petitioners or patentees should want?  

Probably not.
Continue Reading Are Partial AIA Trial Institutions a Good Thing?

New 101 Guidance Addresses Recent CAFC Decisions

Today, the USPTO issued a memorandum entitled “Recent Subject Matter Eligibility Decisions.” (here).  The memo  provides a discussion of two recent CAFC decisions identifying eligible subject matter, namely McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016)…

Privilege Expanded to Cover Communications with Foreign Agents

Tomorrow’s Federal Register will include a NPRM to amend the rules of practice before the Patent Trial and Appeal Board (PTAB). The proposed rule recognizes that, in connection with discovery conducted in certain proceedings at the United States Patent and Trademark Office, communications between U.S. patent agents or foreign patent practitioners and their clients are privileged to the same extent as communications between clients and U.S. attorneys. (advanced copy here)

The rule would apply to Inter Partes Review (IPR), Post-Grant Review (PGR), the transitional program for Covered Business Method (CBM) patents, and derivation proceedings. This rule would clarify the protection afforded to such communications, which is currently not addressed in the rules governing Board proceedings at the USPTO.

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Continue Reading PTAB to Adjust Attorney Client Privilege Rule

Preliminary Responses Accompanied by Declaration Evidence: Early Results 

Back on May 1st, the Patent Trial & Appeal Board (PTAB) began to accept new testimonial evidence with patentee preliminary responses.  The PTAB implemented this change to address complaints that patentees were disadvantaged by previous rules precluding such evidence from accompanying a preliminary response to the petition. It was argued that the previous rules were especially imbalanced as almost all petitions were accompanied by petitioner declaration evidence.  I had my doubts.

Now that we are some 5 months removed from the rule modification, early results are in.  

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Continue Reading New PTAB Evidence Option Not Moving the Needle So Far

Jury Trial/Article III Challenges to PTAB Expectedly Fail at High Court

Yesterday, the Supreme Court of the United States denied certiorari in two cases challenging the constitutionality of AIA trial proceedings. MCM Portfolio LLC v. Hewlett-Packard Co. et al., and Cooper et al. v Lee et al.  These cases largely presented the same constitutional challenge as that lodged against the USPTO’s patent reexamination system in the 1980s, in Patlex Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985).  Since that time, patent validity has been found to fall within the “public rights exception,” permitting adjudication before non-Article III tribunals.

These more recent cases hoped to distinguish reexamination from AIA trials on the ground that reexamination was not adjudicative, but examinational.  Of course, after Cuozzo, it has been clear that this line of reasoning was certain to fail.
Continue Reading Constitutional Challenges to PTAB Fail

Common USPTO Debate Clarified by New Precedential Decision Ex parte Schulhauser

A common debate at the PTO in recent years at both the examination and Board level has been the appropriate treatment of a claimed condition precedent.  That is, if a claim recites that certain functionality only occurs on certain conditions, does that alternate functionality constrain the broadest reasonable scope of the claim?  

In Ex parte Schulhauser (here) the Board makes clear that the answer to this question may depend on whether or not the claim is presented in a method or apparatus claim format.
Continue Reading PTAB Clarifies Weight of Claimed Condition Precedent

Fee Setting Authority to be Exercised for FY 2017 

The USPTO discussed its first ever fee increase under the fee setting authority of the America Invents Act (AIA) in November of 2015.  At the time, an initial proposal was provided to the Public Patent Advisory Committee (PPAC) for review.  While the initial hope was to have the proposed fee adjustments take effect on October 1st (start of FY 2017), significant stakeholder feedback and considerations have, understandably, slowed the rule making process.  At long last, the Notice of Proposed Rule Making (NPRM) issued today.  Since a Final Rule Notice must follow the NPRM, the proposed fee adjustments will not go into effect until calendar year 2017.

Notable Patent Trial & Appeal Board (PTAB) fee increases include:

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Continue Reading PTAB Trial Fees Slated for Significant Increase in 2017

315(e) Estoppel as an Affirmative Defense

As most are aware, completed AIA trial proceedings have estoppel consequences for failed petitioners.  For example, an unsuccessful Inter Partes Review (IPR) petitioner of a given patent claim, real party in interest, or privy of the petitioner, is estopped from asserting that the same claim is invalid in a civil or ITC action on any ground that the petitioner raised or reasonably could have raised during the failed IPR. (35 U.S.C. § 315 (e)(2)). The same estoppel applies to requesting or maintaining a proceeding before the USPTO with respect to such a claim (35 U.S.C. § 315(e)(2)).  As can be appreciated from this statutory framework, whether before the courts or the Patent Trial & Appeal Board (PTAB), Congress was clearly interested in preventing patent challengers from getting the proverbial second bite at the apple.

Occasionally, however, a petitioner will uncover new prior art that could not have reasonably have been raised in the earlier PTAB proceeding  Petitioners seeking to overcome the affirmative defense of statutory estoppel may find that the courts are far more receptive in this regard than the PTAB.
Continue Reading Forum Selection & PTAB Estoppel Burden

30 Years Since the Formation of the Last National IP Bar Association

What better day to launch the new Patent Trial & Appeal Board (PTAB) Bar Association than on the 5th year anniversary of the enactment of the America Invents Act (AIA). I am honored to have been involved with the creation of the only bar…