Patent Trial & Appeal Board

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Four Years of PTAB Trials

I’ve read quite a few AIA retrospectives over the last week in the run up to Friday’s AIA anniversary. Almost all pose the rhetorical question: “who could have predicted the PTAB would become so impactful?” Well, for starters anyone up to their armpits in NPE lawsuits with the only available USPTO solution being patent reexamination, that’s who.  Prior to the AIA the pent up rage/demand for a more effective USPTO post-grant challenge solution was palpable. For that reason, back in July of 2012, I thought that PTAB trials might break the NPE business model, especially for smaller NPEs.  

In 2016, NPEs still exist.  But, there are far fewer small fish.  Even large patent aggregators yearn for the go-go days before the AIA.  It is clear that the AIA trials ended the golden era of seven figure, cost of defense settlements.  Congress did it—it actually provided a workable USPTO post-grant solution that is cost effective, and fast enough to make a difference.  The PTAB levels the playing field.  No longer are businesses helpless to settle cases of dubious merit because of the lopsided discovery costs of an NPE suit, or risks of outlandish jury verdicts.  

That said, four years into AIA trials the PTAB is not without its critics.   

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Continue Reading The Evolution of PTAB Trials

Federal Holiday Treatment for Emergencies Not Unprecedented

As many recall, back on December 22nd, the USPTO’s e-filing systems crashed. The outage lasted several days as the replacement of large power supplies driving the systems was time consuming. To account for the inability to file electronically during this outage (the predominant channel for accepting filings from the public), the agency issued a notice explaining that December 22nd through 24th were “considered” to be federal holidays for filing purposes.  That is, any filings falling due on December 22-24th would be accepted as timely on the next business day. Given the Christmas holiday of Friday December 25th, and the following weekend, the next business day was December 28th.

Last week, Elm 3DS Innovations, sued the USPTO in the Eastern District of Virginia to enjoin the agency from conducting Inter Partes Review (IPR) of its patents. 3DS argues that the IPRs filed against it were due to be filed on December 24th by statute, and that the agency’s action to extend this due date was “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law, and otherwise in excess of statutory jurisdiction, authority, or limitations.” (complaint here)

3DS has an uphill battle.

The USPTO has consistently interpreted the relevant statute to cover non-postal emergencies. Even agencies without a statute conveying discretionary power for such emergencies have employed the same accommodation to extend statutory deadlines.

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Continue Reading December E-Filing Accommodation Unlikely to Unravel IPRs

Amendment Practice to Remain Unpopular Regardless of In Re Aqua Products Outcome

Last Friday the Federal Circuit agreed to rehear In re Aqua Products Inc. The en banc rehearing will consider amendment practices of the Patent Trial & Appeal Board (PTAB) in AIA trial proceedings. Specifically, the Court will explore where the burdens of persuasion and production properly lie for motions to amend. To date the Court has repeatedly found the burden of persuasion to rest with the patentee for motions to amend.

While it appears likely that the Court will shift burdens away from patentees seeking amended claims before the PTAB, practically speaking, such an outcome is unlikely to make much of a difference. At the end of the day, amendments will always remain highly unattractive for patentees at the PTAB.
Continue Reading CAFC En Banc Review Unlikely to Spur PTAB Amendments

Opportunity to Amend Prior to Expiration Not Enough

The Patent Trial & Appeal Board (PTAB) applies the broadest reasonable interpretation (BRI) standard of claim construction in all post-grant patent proceedings. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2145 (2016). The lone exception is for expired patents.  Once a patent expires, the USPTO switches to the district court “Phillips” framework. The justification for this switch is that patentee may no longer amend at expiration, and that in such cases, the district court construction should apply.

As can be appreciated, the expiration of a patent in the middle of an agency proceeding can result in inefficiencies.  Recently, the PTAB considered whether or not the expiration of a patent on appeal to the Board required a new Philips construction.  The Board determined that since there was an opportunity to amend prior to the appeal (i.e., the justification for applying BRI) that no such do-over was required.  The CAFC disagreed.

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Continue Reading PTO Must Reset Claim Analysis at Patent Expiration

RPI Determination Under 315(b) Focuses on Litigation Control

In determining whether a party is a real party-in-interest subject to the one-year statutory bar of 35 U.S.C. § 315(b), the focus of the Patent Trial & Appeal Board (PTAB) to date has been honing in on the exercise of control over the earlier filed patent infringement lawsuit. The PTAB recently considered whether control of the allegedly infringing activity is enough to transform a party not named in the original complaint to an RPI for 315(b) purposes in Department of Justice v. IRIS Corporation Berhad, Case IPR2016-00497, slip op. at 7-9 (PTAB Jul. 25, 2016) (Paper 7).
Continue Reading Intervenor Activities & PTAB RPI Determinations

Anti-Competitive IPR Settlements for Orange Book Patents?

The Patent Trial & Appeal Board (PTAB) has the power to terminate an Inter Partes Review (IPR), Post Grant Review (PGR), or Transitional Proceeding for Covered Business Method Patents (CBM) upon request of the parties. As provided in 35 U.S.C. 317 (b), such settlement agreements must be in writing, and submitted to the agency before the proceeding can be terminated.  These submissions may be, at party request, maintained as business confidential— not surprisingly, almost all are submitted under seal.  The statute explains that the the confidential nature of these settlements will be generally maintained, but “shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause.”

The rationale behind making these agreements available to government agencies in particular is to safeguard the public from ant-competitive practices. Some commentators have begun to question whether or not “reverse payment” settlements are being made to terminate PTAB trial proceedings involving Orange Book patents.

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Continue Reading Reverse Payment PTAB Settlements in Bio/Pharma?

CAFC Clarifies Burden of Production in AIA Trial Proceedings

In patent examination, once a prima facie case of obviousness is presented in a rejection by the agency, the burden of production switches to the Applicant. In AIA trials, such as Inter Partes Review (IPR) there are no “rejections,” instead, there are “grounds” of unpatentability. These grounds are first presented in a petition, and if satisfying the reasonable likelihood of prevailing standard, instituted for trial by the Patent Trial & Appeal Board (PTAB).  However, institution of a trial ground by the agency is not the same as establishing a prima facie case. 

As the Federal Circuit held yesterday in In re Magnum Oil Tools Int’l, Ltd. the burden of production does not shift to the patentee upon trial institution.
Continue Reading PTAB Institution is Not Akin to Rejection in Patent Examination

Post-Grant Outcomes Pilot Identifies 600+ Patent Applications Related to Ongoing AIA Trial Proceedings

Back in February I discussed the USPTO’s plans to launch a pilot program designed to enhance communication between patent examiners and the Patent Trial & Appeal Board (PTAB).  The USPTO explained the pilot as an attempt to create a bridge between the PTAB and patent examiners examining patent applications related to an ongoing AIA trial proceeding. That pilot, now known as the Post-Grant Outcomes Pilot is well underway.
Continue Reading USPTO Shares PTAB Trial Information with Patent Examiners

Much Maligned PRPS to Phase Out Shortly

In the rush to develop an e-filing system in the months ahead of September 16, 2012, the USPTO deployed a serviceable e-filing system for AIA trial proceedings known as the Patent Review Processing System (PRPS).  While understandable given the time constraints to pull it together, PRPS was a bare bones system that left much to be desired.  Since then, PRPS has done its job, but, the agency has been developing a new, and improved system.  Halleluljah!

That new system is called Patent Trial and Appeal Board End to End (PTAB E2E).  PTAB E2E uses a web browser…
Continue Reading PTAB To Debut New E-Filing System July 9th