Patent Trial & Appeal Board

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Patentees Back Themselves Into a Corner at PTAB

Both patentees and challengers alike were displeased with inter partes patent reexamination prior to the America Invents Act (AIA). Inter partes patent reexamination was too slow to serve as a true alternative to litigation for patent challengers, and patentees argued the system was biased against them. In formulating the AIA Congress fashioned a replacement, Inter Partes Review (IPR).  The IPR statutes, not surprisingly, mandate speed, and include mechanisms directed to the perceived lack of fairness of the old reexamination model.

Patentees argued that inter partes patent reexamination procedure favored patent challengers since: (1) Declarants in reexamination were not subject to cross-examination; and (2) a patentee was unable to respond to a request for reexamination before it was ordered by the USPTO. Specifically, patentees urged that had they an opportunity to respond to the reexamination request before the USPTO made a decision, years of harassing/expensive reexamination and appeal proceedings could be avoided.  Further, they argued the ability to cross-examine a challenger ‘s declarants would also help expose baseless expert theories assailing their patented claims. For this reason, the IPR statutes provides for cross-examination of declarants as well as a “preliminary response” from patentees.

Yet, even with the added IPR mechanisms, patentees are not faring much better as compared to the days of inter partes patent reexamination. As a result, patentees have lobbied for further changes. These changes, some of which are now proposed as formal rule changes by Patent Trial & Appeal Board (PTAB) may only make matters worse for some patentees.

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Continue Reading Proposed PTAB Rule Change May Backfire on Some Patentees

Second Pilot Directed to Small & Micro Entities

Back in June, the PTAB began a pilot program to allow appellants with multiple ex parte appeals pending before the Board to expedite review of one appeal in return for withdrawing another. The stated purpose of the Expedited Patent Appeal Pilot is to allow appellants with multiple, pending ex parte appeals (i.e., large patent filers) to have greater control over the priority with which their appeals are decided.  This pilot is also hoping to reduce the backlog of appeals pending before the Board.  

When introduced, I noted that I could not imagine independent inventors being thrilled with a program that allows large filers a slightly faster path to a Board decision.

Fortunately, the agency has now introduced a second pilot directed to small and micro entities.

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Continue Reading Second Pilot Announced to Expedite Ex Parte PTAB Appeals

PTAB Practice, Influence on Patent Prosecution & Patent Policy on Tap for Fall 2015

For those seeking PTAB related Education/CLE this fall, there are quite a few upcoming options.

Starting next week, September 16th, the Giles S. Rich American Inn of Court will be hosting its first meeting of the year at the Court of…

Prior Art 102(e) Date of Provisional Filing Linked to Scope of Utility Patent Claims?

Last Friday the Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Patent Trial & Appeal Board (PTAB) in Dynamic Drinkware LLC v. National Graphics Inc. IPR2013-00131 (here).  While an affirmance is typically good news for the agency, going forward, the Court’s decision may create an unexpected headache for both the Board and USPTO Examining Corps.
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Continue Reading CAFC Finds Prior Art Status of Patent Depends on Claim Scope?

Patents in the Unpredictable Arts No Easy IPR Mark

Back in January of last year Kyle Bass introduced himself to the patent community through a series of brash, public pronouncements on a perceived lack of quality in drug patents. His stated intention was to “knee cap” drug companies by leveraging Inter Partes Review at the Patent Trial & Appeal Board (PTAB) to cancel, in his view, improvidently granted patents. My reaction to those pronouncements was to predict that it would be Mr. Bass that would be “knee capped” as invalidating patents in the unpredictable arts is easier said than done. This is because there is already a significant interest in cancelling such patents from a highly sophisticated generics industry.  If defeating such patents were that easy, generics would already be on it. For this reason, the vast majority of patents sucessfully challenged at the PTAB are in the predictable arts (i.e., electrical and/or mechanical).

Since that time, Mr. Bass has seen his first two IPR filings denied by the PTAB on technical grounds. (failure to prove public accessibility of the underlying prior art references). Earlier this week, the Board denied the third Bass filing on the merits. In this filing, Mr. Bass and friends took on a method of treating multiple sclerosis as claimed Biogen’s U.S. patent 8,399,514. In its decision, the PTAB essentially explained to Mr.Bass that an obviousness analysis, in the unpredictable arts, requires far more than an “obvious to try” rationale. (here).

Given his 0-3 record, and the impending sanction orders against Mr. Bass in his remaining IPR proceedings, the outlook is quite negative for this investment vehicle.
Continue Reading Kyle Bass Now 0-3 at PTAB With More Pain to Come

Pilot Program to Limit APJ Review For IPR Institution

As promised in last week’s rule package, a second Federal Register Notice (here) has issued from the USPTO’s Patent Trial & Appeal Board (PTAB). This Notice, entitled: Request for Comments on a Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions in Post Grant Administrative Reviews, proposes to select IPR petitions for inclusion in a pilot program whereby only a single Administrative Patent Judge (APJ) decides the petition (CBM and PGR are excluded). Currently, three APJs review IPR petitions prior to instituting an AIA trial. However, three judges are only statutorily required for trial, not institution.  So, the PTAB is exploring ways to become more efficient in view of its growing workload.
Continue Reading PTAB Considers Single Judge Pilot Program

Kyle Bass & Friends Swing and Miss in First Two Attempts at IPR

Today, the Patent Trial & Appeal Board (PTAB) denied institution of IPR 2015-00720 and IPR2015-00817 (here and here). These IPR petitions, targeting U.S. Patents 8,663,685 and 8,007,826 of Accorda Therapeutics, were advanced by the so-called “Coalition For Affordable Drugs.”  The Coalition, more widely recognized as a creation of hedge fund manager Kyle Bass, has filed 20+ petitions in the past few months against various drug patents. 

These PTAB denials are likely the first in a long series of disappointments for the Coalition.
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Continue Reading First Two Hedge Fund IPRs Fail

PTAB + Octane Fitness = Problem

Back in 2014, I explained that the recent shift in exceptional case analysis under Octane Fitness, LLC v. ICON Health & Fitness, Inc. and Highmark Inc. v. Allcare Health Mgmt. Sys., would provide opportunity for successful Patent Trial & Appeal Board (PTAB) petitioners. This is because accused infringers are universally embracing PTAB proceedings as an alternative to high cost litigation, and, are increasingly seeking fees after Octane.

Last week, the Southern District of California awarded fees of roughly $400k to a successful USPTO patent challenger in Deep Sky Software, Inc. v. Southwest Airlines Co., 3-10-cv-01234 (CASD).

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Continue Reading Plaintiffs Beware: PTAB Fee Awards Might Be Headed Your Way

Customers of a Defendant Supplier Do Not Have CBM Standing

The Patent Trial & Appeal Board (PTAB) denied institution of a CBM review of Phoenix Licensing, LLC’s (“Phoenix”) 8,352,317 patent in CBM2015-00068, determining that the only remaining Petitioner, Acxiom Corp. (“Acxiom”), lacked standing under § 18(a)(1)(B) of the AIA. (here)

By way of background, the Petition was originally filed by four entities, but the proceeding was terminated with respect to AT&T Mobility LLC, AT&T Services, Inc., and Ford Motor Company (“Ford”), leaving only Acxiom. Under § 18(a)(1)(B), a person may not file a CBM unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or otherwise charged with infringement of the patent. As such, CBM petitions are required to establish that the petitioner meets the standing requirements with sufficient proof. In this case, the Petition merely stated that Acxiom is one of the “real parties-in-interest to and/or privies of one or more parties who have been sued…” without providing any additional explanation or evidence.
Continue Reading CBM Standing Flows Up the Supply Chain, Not Down