Next Tuesday, April 5th (12-1PM (EST)) the PTAB will host another Boardside Chat webinar to address the growing complexity of relationships between AIA trial proceedings, patent reexamination, and patent reissue proceedings. The free webinar will be hosted by Administrative Patent Judges (APJs) Joni Chang and Sally Medley. The webinar
This past Wednesday the U.S. Department of Justice filed its Respondent Brief in Cuozzo Speed v. Lee. (here) Amicus filings in support of the Respondent are due to be filed by March 30th.
The stay of the VirnetX IPR only lasted a little over a week. As a reminder, the VirnetX writ of mandamus was filed with the Federal Circuit on March 4th. The writ argued that the joinder exception of 315(b) is applicable only to timely filed petitions in which the request
The petitioner briefing to date in Cuozzo Speed Technologies, LLC v. Lee (No. 15-446; S.Ct) emphasizes the “examinational” application of the USPTO’s broadest reasonable interpretation (BRI). The briefing argues that since PTAB trials are “adjudicative” as opposed to “examinational,” BRI could not have been contemplated by Congress for adjudicative proceedings (since, it is argued, that such adjudicative proceedings do not provide the same degree of amendment opportunity as examinational proceedings). Yet, absent from the petitioner’s opening brief, save a single footnote, footnote 6, is any acknowledgement that patent interference is an adjudicative proceeding that has applied BRI for decades to both involved applications and patents — and also limits amendment options to a motion process — just like Inter Partes Review (IPR).
That amending in patent interference operates in the same manner as AIA trials should hardly be surprising given that the AIA trial rules were built upon the existing patent interference framework. Can this decades-old, adjudicatory framework, that both uses BRI and requires amendment by motion, be distinguished by Cuozzo?
Continue Reading Long-Standing Use of BRI in Interference a Hurdle for Cuozzo
There has been a fair amount of controversy regarding issue joinder practices at the PTAB. But, to date, the language of 315(b) that seemingly excuses late IPR petition filings has been taken at face value. That is, while 315(b) limits initiation of a an IPR to within 12 months of service of a complaint for infringement of the subject patent, the last sentence explains that “the time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).”
In a writ of mandamus filed with the Federal Circuit last week, the exception of 315(b) is argued as applicable only to timely filed petitions in which the request for joinder occurs outside of the 12-month window. In other words, the exception does not permit petitioners that have already missed their 12-month window to remedy the problem via joinder.
Continue Reading Mandamus Questions PTAB Joinder Practices
in 2013 the Trademark Trial & Appeal Board (TTAB) issued a precedential decision in a trademark opposition between the Board of Trustees of the University of Alabama et al v. William Pitts, Jr. & Christopher Blackburn. In the decision, the TTAB dismissed the opposition of the University against a mark for a logo with a houndstooth pattern with the words “Houndstooth Mafia” for use on T-shirts and hats. (The logo was seemingly inspired by the houndstooth fedora worn by the late Alabama football coach Paul “Bear” Bryant). The opposition was dismissed as the TTAB determined that the University had no common law rights to a houndstooth pattern. (here)
Rather than appeal the TTAB decision to the Federal Circuit, the University opted to challenge the TTAB decision in a civil action under 15 U.S.C. 1071(b)(1) — in the Northern District of Alabama. Before that action progressed very far the parties settled, and via consent decree of the Court, agreed that the TTAB decision should be vacated. More importantly, the consent decree made statements of fact that the houndstooth pattern had become distinctive, which could impact other ongoing TTAB oppositions of the University on the same issue. The University motioned to vacate the TTAB decision based upon the consent decree (here). In an expanded panel decision that included the Chief Judge of the TTAB, the motion was unanimously denied. The TTAB determined that a settlement of private parties should not impact a decision of the TTAB absent extraordinary circumstances; especially where precedential.
The Alabama judge strongly disagreed. In a stinging memorandum, he ordered the TTAB to vacate its Order within 14 days. (here)
Continue Reading PTAB Vacatur By Court Order?
The Patent Trial & Appeal Board’s (PTAB) use of the Broadest Reasonable Interpretation (BRI) standard is now slated for review by the Supreme Court in Cuozzo Speed v. Lee. Opponents of the BRI standard, such as Cuozzo, argue that a “Philips” style claim construction is most appropriate for the PTAB because issued claims should be construed consistent with district court. More importantly, Philips is considered to be a more patent friendly (i.e., narrower) interpretation. Yet, as I have pointed out before, the BRI and Philips frameworks are largely the same. While the question posed to the Supreme Court in Cuozzo alleges a difference in the application of “plain and ordinary meaning,” this difference is readily disproven.
To the extent a difference can be delineated between PTAB and district court claim interpretation practices it is the perspective of the decision makers. When applying Philips, courts will attempt to identify a “most reasonable” scope rather than the “broadest reasonable” scope. While both selections require a reasonable outcome, and the constructions may lead to the same result in many cases, the “most reasonable” interpretation could include a selection between competing, reasonable constructions. This selection is all too often driven by invalidity concerns. (despite the caution against such in the Philips decision itself)
Given that the PTAB has consistently maintained earlier BRI interpretations for patents that expired during review (requiring a switch to Philips) it is difficult to even identify a case where the PTAB’s proper application of Philips would move the needle. Yesterday, the CAFC set out to provide such an example in PPC Broadband Inc., v. Corning Optical Communications RF, L.L.C.
Continue Reading CAFC May Have Amplified Need for BRI at PTAB
Limiting the scope of a patent claim to an unclaimed feature of a specification embodiment— even where it is the only described embodiment— is rarely successful. This is because patent specifications almost never describe an embodiment with words that manifest a clear intention to limit the scope of their invention to particular features. Yet, earlier this week, in Secure Web Conference Corp. v. Microsoft Corp., the Federal Circuit affirmed a district court claim construction that limited claims to an unclaimed feature of a specification embodiment. The CAFC agreed with the lower court that the described embodiment was limiting as capturing the essence of the invention.
To avoid prior art under the Broadest Reasonable Interpretation (BRI) rubric, Patentees often advocate for a narrow claim read before the USPTO Patent Trial & Appeal Board (PTAB). As such, this district court appeal decision may be of particular interest to Patentees.
Continue Reading CAFC Limits Claim to Feature of Described Embodiment
Last week, the Federal Circuit remanded an Inter Partes Review (IPR) appeal from the Patent Trial & Appeal Board (PTAB) so that Patentee’s motion to amend could be reconsidered. In the decision, the Court faulted the Board for applying a strict view of the Idle Free requirements (softened by the PTAB after this decision in Masterimage). Additionally, the Court found the Board’s analysis lacking as to the patentable distinctiveness of substitute claims. Nike, Inc. v. Adidas AG 14-1542 (here)
The Supreme Court will soon consider the propriety of the “appeal bar” of 35 U.S.C. § 314(d) in Cuozzo. This appeal bar of the America Invents Act (AIA) prevents appeal of institution decisions of the Patent Trial & Appeal Board (PTAB). To date, attempts to circumvent this bar have failed via writ of mandamus to the Court of Appeal for the Federal Circuit (CAFC), and lawsuits against the USPTO under the Administrative Procedure Act (APA).
This week, another attempt to side-step the appeal bar was denied by the CAFC in Synopsys Inc., v. Mentor Graphics Corp.
Continue Reading CAFC Shuts Down Another Attempted Side-Step to 314(d) Bar