Patent Trial & Appeal Board

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Federal Circuit Finds Admissibility of Supplemental Information a Matter of Discretion

When discussing Patent Trial & Appeal Board (PTAB) trial practice, the topics of supplemental information and supplemental evidence are often confused. Supplemental evidence may be filed as a matter of right within 10 days of a party objection. 37 C.F.R. § 42.64(b)(2).  On the other hand, supplemental information is considered only upon motion of  a party. Typically, supplemental information is filed by a petitioner within one month of trial institution to proactively reinforce an active trial ground. (e.g., information not previously available, recently produced in litigation, etc).  37 C.F.R. § 42.123

Early on, Rule 42.123(a) was the target of significant patentee criticism. Patentees argued that the Rule provided a potential avenue for gamesmanship and petitioner sandbagging.  The rule provides:
§ 42.123 Filing of supplemental information.
(a) Motion to submit supplemental information. Once a trial has been instituted, a party may file a motion to submit supplemental information in accordance with the following requirements:
(1) A request for the authorization to file a motion to submit supplemental information is made within one month of the date the trial is instituted.
(2) The supplemental information must be relevant to a claim for which the trial has been instituted.

The patentee criticism was that the Rule permitted a petitioner to file supplemental information as long as it was filed within one month of institution— and relevant to a claim under review.  Indeed, patentees in some early IPRs declined to file a preliminary response for fear that it would be used as a roadmap by the petitioner to fashion its supplemental information filing.  

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Continue Reading PTAB Supplemental Information Not a Sand Bagging Tool

No Patentable Weight When Claiming Content of Printed Matter

In the data processing arts, it is not uncommon for a patent examiner to disregard a limitation of a patent claim as constituting “printed matter.”  For example, if one were claiming the data structures internal to an iPod, the fact that a playlist may constitute “jazz” songs is not a patentable distinction. This is because the content of a playlist (as opposed to the functional characteristic of the actual data structures) is “printed matter” that cannot convey patentability.  

Last week, the Federal Circuit clarified the printed matter analysis in In Re: Thomas L. Distefano, III 

In explaining the proper analysis for printed matter, the Court explained (here):…
Continue Reading CAFC Explains Printed Matter Analysis

PTAB Trial Not Necessarily Constrained to Petition Grounds

Patentees often amplify relatively insignificant technical differences between a patent claim and the prior art in district court to great success. Such strategies often fall flat in front of the USPTO where the technical expertise of the agency can expose such distinctions as inconsequential (inherent), or obvious — usually.

For example, in patent reexamination, examiners adopt and/or modify challenges to suit their technical understanding. Later, on appeal, judges of the Patent Trial & Appeal Board (PTAB) may issue new rejections where a trivial patent claim difference is known, or suggested by the art as obvious. More recently, however, the same PTAB judges reviewing AIA trial petitions often times take a hyper-technical view of proposed grounds of unpatentability. That is, judges of the trial section often feel constrained to the grounds presented in a petition even though an argued “distinction” over the proposed grounds is a well-known, trivial feature in the art.

Today, the Federal Circuit reiterated that the PTAB is not so constrained in dealing with AIA trial petitions.  
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Continue Reading CAFC Finds PTAB Has Discretion to Augment Trial Grounds

Dissent Finds Burden of Unpatentability Rests with Petitioner for Amended Claims

Back in July, the USPTO’s Patent Trial & Appeal Board (PTAB) issued an informative decision in Masterimage 3D. Inc. v. RealD Inc. (IPR2015-00040) (here). In Masterimage, the Board explained that a patent owner moving to amend before the PTAB bears the burden of distinguishing its amended claims over prior art of record and also prior art known to the patent owner. In doing so the Board defined the scope of “prior art of record” and “prior art known to the patent owner.”  The Board defined prior art of record as:

     a. any material art in the prosecution history of the patent;
     b. any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review; and
     c. any material art of record in any other proceeding before the Office involving the patent.

Last week, in Prolitec, Inc., v. Scentair Technologies, Inc, the Federal Circuit considered whether this “prior art of record” burden was appropriate.
Continue Reading CAFC Debates PTAB Amendment Burden

Federal Circuit Reinforces Patent Rights as a Public Concern of a Regulatory Framework
The constitutionality of USPTO’s Inter Partes Review (IPR) mechanism has been challenged in a few district court cases over the past year. The challenge typically argues that the Patent Trial & Appeal Board (PTAB) cannot abrogate the jurisdiction of an Article III court in assessing patent validity, and/or that the PTAB prevents the 7th amendment right to a jury trial. I have largely refrained from discussing these recent cases as I found the arguments to be a bit too “creative.”  This is because the very same arguments failed decades ago when patent reexamination was first introduced in the 1980s.  Patlex Corp v. Mossinghoff (CAFC 1985)

The recent constitutionality arguments hoped to distinguish the earlier precedent on the basis that, unlike patent reexamination, which is examination based,  IPR is adjudicative.  I always found this position odd given that an unfavorable reexamination may be appealed to several adjudicative bodies, and IPR was a replacement for inter partes patent reexamination (which was also adversarial).

Today, in MCM Portfolio LLC v. Hewlett-Packard Company, the CAFC agreed, reinforcing the Patlex precedent of the 1980s.
Continue Reading CAFC Denies Strained Constitutionality Challenge to IPR Process

New Rejections Raised During Appeal by Patent Examiner?

Just a reminder that the USPTO Patent Trial & Appeal Board (PTAB) still does a lot of appeal work besides conducting AIA trial proceedings.

The PTAB has released guidance on responding to new grounds of rejection in an examiner’s answer.  The article reviews the Board Rules for…

Heightened Written Description Requirement for Negative Claim Limitations?

Negative patent claim limitations were once disfavored by the USPTO.  This is because defining claim scope by exclusion was considered less precise relative to more traditional, positive claim scope recitations.  Over the years, the USPTO has been guided to accept negative limitations as in some cases it may be the only way to adequately claim a given invention.  Yet, in assessing written description support for such claim features, the USPTO explains that “the mere absence of a positive recitation in a patent specification is not a basis for exclusion consistent with written description requirements.” MPEP 2173.05(i) 

In some cases, examiners have been known to require explicit support for a negative claim limitation. The degree of specification support necessary to support a negative claim limitation was analyzed last week by the Federal Circuit.
Continue Reading CAFC Weighs in on Negative Claim Limitation Support

New Declaration Evidence Proper If Rebutting Patentee Arguments to Trial Grounds

The Patent Trial & Appeal Board (PTAB) assesses the content of a patent challenger’s petition (in view of any patentee preliminary response) to determine whether or not to institute an AIA trial proceeding.  If trial is instituted, the Patentee may submit a Patentee Response together with any supporting testimonial evidence.  In most cases, the Patentee Response is the last Patentee response on the merits. Thereafter, the Petitioner, which has the burden of demonstrating unpatentability, is given the last substantive filing via its Petitioner Reply. A few months later, the oral hearing marks the conclusion of the formal trial schedule.

Since the Petitioner is provided with the last substantive response, a common dispute in AIA trial proceedings is the content of the Petitioner Reply.  That is, Patentee’s often argue that arguments or testimony of the Petitioner Reply are “new.”  This raises the question of whether or not the trial is limited to only that material present in the petition filing, or if it also encompasses rebuttal arguments, and more particularly, new rebuttal testimony of a declarant.

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Continue Reading CAFC Endorses Due Process of PTAB Trial Mechanics

Fee Setting Authority to be Exercised for FY 2017 (Oct. 2016)

In advance of the November 19, 2015 Patent Public Advisory Committee (PPAC) meeting, the USPTO has distributed its first fee change plan.  As a reminder, the agency was given fee setting authority under the America Invents Act, this is the first time that authority is being exercised.  The PPAC will provide input on the proposed fees (both patent and trademark) at its upcoming meeting.  Thereafter, the USPTO will issue a Federal Register Notice in January of 2016, with plans on a final notice of rulemaking, and implementation for fiscal year 2017 (October 1, 2016). 

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

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Continue Reading USPTO Proposes Hike in PTAB Fees for 2016