Patent Trial & Appeal Board

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CAFC Makes Clear BRI Encompasses Plain & Ordinary Meaning

The USPTO’s Broadest Reasonable Interpretation (BRI) encompasses an assessment of the plain and ordinary meaning of a patent claim term.  As such, the Supreme Court’s grant of certiorari in Cuozzo Speed v. Lee to review the Patent Trial & Appeal Board’s (PTAB) application of BRI is puzzling. 

As a reminder, the Cuozzo petition presented its BRI question as follows:

1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.

Last week, in TriVascular, Inc. v. Samuels, the Federal Circuit explained that a BRI analysis necessarily includes an assessment of the plain and ordinary meaning, and that BRI is not an unfettered license to interpret claims without regard for the written description.

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Continue Reading CAFC Undermines Cuozzo BRI Gripe

Patentee Burden Drives PTAB Obviousness Analysis

In Prolitec, Inc., v. Scentair Technologies, Inc.  the Court of Appeals for the Federal Circuit (CAFC) confirmed that patentees bear the burden of demonstrating patentability for amended claims in AIA trial proceedings before the USPTO Patent Trial & Appeal Board (PTAB).  Prolitec also found that this burden encompassed both the art of record in the AIA trial proceeding as well as the original patent prosecution history.

Earlier this week, in Illumina Cambridge LTD., v. Intelligent Bio-Systems, Inc., the Court explored the PTAB’s analysis of amended claims relative to the burden of the patentee.  That is, whether or not the Board is required to do a traditional obvious analysis for amended claims, anew, or whether the existing record can be used as a backdrop by which the movant’s burden can be assessed.

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Continue Reading CAFC Again Emphasizes Patentee Burden for PTAB Amendment

Must IPRs Be Filed on a Weekend/Holiday to Meet the Requirements of 315(b)?

Petitioners seeking Inter Partes Review (IPR) must be mindful of the statutory bar of 35 U.S.C. § 315(b). This provision precludes IPR from being instituted for a patent in which the petitioner was served with a complaint of infringement more than one year prior to the petition filing. The rationale for the statutory bar of 315(b) is straightforward. That is, IPR was designed to be a true alternative to patent litigation, not an adjunct process that was typical of the inter partes patent reexamination proceeding it replaced. By mandating that an IPR filing be brought earlier in the litigation timeline, Congress hoped to avoid duplicative proceedings, avoid patentee harassment, and enhance the ability of the Patent Trial & Appeal Board (PTAB) to provide a timely resolution to such business disputes.

The time-limit language of 315(b) mandates denial of any petition filed “more than one year” after service of a complaint.  Nevertheless, the USPTO will routinely accept petitions filed more than one year after service of a complaint if the one year anniversary falls on a weekend or holiday. In such cases, the time to file is extended until the next USPTO business day. However, taking advantage of this weekend/holiday extension may prove risky in the electronic age.
Continue Reading The 315(b) IPR Window May be Shorter Than Once Thought

2016 Boardside Chats Include AIA Trial & Patent Reexam Appeal Topics

Starting next week, February 2nd, the USPTO’s Patent Trial & Appeal Board (PTAB) will host its second year of “Boardside Chat” webinars. The purpose of the chats is to update the public on current Board activities and statistics as well as to regularly gather feedback; this is not a CLE event. The first webinar (noon to 1PM EST) will focus on the similarities and differences between appeals stemming from a patent reexamination and those from an ex parte, application appeals. (access the Boardside Chat webinar here)

For those seeking CLE credit on PTAB trial issues, on February 4th,…
Continue Reading PTAB Boardside Chats for 2016

PTAB Trial Basics To Be Reviewed By High Court

Earlier this month the Supreme Court granted certiorari in Cuozzo Speed v. Lee.  The Cuozzo appeal involves the very first Inter Partes Review (IPR) ever filed with the USPTO’s Patent Trial & Appeal Board (PTAB). Throughout the IPR and CAFC appeals, patentee Cuozzo has maintained that the broadest reasonable claim interpretation (BRI) employed by the PTAB is improper, and that the PTAB’s decision to institute trial should be reviewable on appeal. The Federal Circuit disagreed on both issues, but sitting en banc was sharply divided.

In its petition for certiorari Cuozzo presented two issues for review to the Supreme Court, now accepted:

1.     Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.

2.     Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

The grant of certiorari in many Federal Circuit cases has led to reversal.  As such, many are viewing the high court’s interest in Cuozzo as an indication that the use of BRI in PTAB proceedings will be short-lived.  Unlikely.

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Continue Reading What Does High Court’s Review of Cuozzo Mean for PTAB?

Decisions Clarify Estoppel and 12-month Window Questions

Earlier this week I pointed out my Top 5 PTAB decisions for 2015. Also this week, the Board highlighted two of its own 2015 decisions, designating both precedential.

The first decision, LG is more noteworthy given it addresses the 12-month window, a topic that can get quite…

Meet the New Boss, Same as the Old Boss….

When instituting an Inter Partes Review (IPR)—or any AIA trial proceeding for that matter— a panel of three administrative patent judges finds that the petitioner has made the threshold showing necessary for trial to proceed.  Later, these same three judges will assess all evidence presented during the trial to determine whether or not any claims of the subject patent should ultimately be cancelled as unpatentable.  Some patentees consider the use of the same judges from start to finish to be unfair. That is, there is a belief that use of the same judges brings with it a bias in favor of following through on the initial determination.

Yesterday, in Ethicon Endo-Surgery, Inc. v. Covidien LP The Federal Circuit considered whether the USPTO is obligated, under a variety of theories, to use different decision makers for the purpose of ensuring fairness.  

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Continue Reading CAFC Endorses Use of Same PTAB Judges Throughout AIA Trials

Decisions of Note for Practitioners

During last week’s, blog webinar I recounted some of the more noteworthy Patent Trial & Appeal Board (PTAB) decisions of 2015. My focus was not on interesting cases in an academic sense, but instead, on cases that were impacting PTAB practice today.

These cases included clarification of various AIA estoppel provisions, the final word on issue joinder, clarification of the Idle Free amendment requirements, and a decision that was a game changer for AIA petition practice.
Continue Reading TOP 5 PTAB Decisions of 2015

CAFC Outlines Most Common Faults in Secondary Indicia Showing

The efficacy of objective evidence of non-obviousness (i.e., secondary indicia) hinges on the ability to demonstrate a “nexus” between the evidence and the subject patent claims. This is because such evidence cannot be accorded substantial weight absent a nexus to the claimed invention.  As pointed out in a previous post a compelling showing of nexus is more likely in the unpredictable arts where specific formulations, dosages and the like are more readily correlated to such secondary indicia as commercial success and long-felt but unsolved needs.

Recently, in Merck & Cie v.Gnosis S.p.A., (here) the Federal Circuit affirmed the Patent Trial & Appeal Board’s (PTAB) nexus analysis in an unpredictable art. In Merck, the Court agreed that patentee’s secondary indicia lacked a nexus to the claims of U.S. patent 6,011,040 (methods of using folates  to decrease levels of homocysteine) and, in the process, outlined some of the more common deficiencies in such evidence— illustrating the difficulties in presenting a nexus even in specific formulation claims.
Continue Reading CAFC Sides with PTAB’s Rejection of Secondary Indicia Nexus