The USPTO has now published its promised Patent Trial & Appeal Board (PTAB) Rule Package (advance copy here). The proposed changes are largely expected given the discussion coming out of the agency for months on these issues. The proposals are as follows:
Yesterday, in Power Integrations, Inc., v. Lee (CAFC 2015) the Court considered the rejection of claims 1, and 17-19 of U.S Patent 6,249,876. Reexamination of the ‘876 patent was initiated by the USPTO in 2006 at the request of Fairchild Semiconductor. At issue in the reexamination (and in a parallel infringement action) was the meaning of the claim terminology “coupled to.” The Patentee insisted that this terminology had both a functional and structural meaning. On appeal to the Board of Patent Appeals and Interferences (BPAI — Now the PTAB), affirmed the examiner’s rejection of the claims. In doing so, the Board appeared to focus only on the structural aspect of the disputed claim terminology.
Continue Reading CAFC Finds PTAB Claim Analysis Incomplete Relative to Markman
Once upon a time, patent reexamination was the only mechanism to challenge a U.S. patent at the USPTO. First introduced as an ex parte proceeding in the 1980s, patent reexamination was expanded to include an inter partes option in 1999. Thereafter, patent reexamination became a popular adjunct to patent litigation. Yet, increased popularity of patent reexamination led to significant delays and increased pendency. The expanding timelines, among other shortcomings, prevented inter partes patent reexamination from serving as a true alternative to patent litigation. Not until the patentability trial mechanisms of the America Invents Act (AIA) did Congress finally succeed in providing a true alternative to patent litigation at the USPTO.
The falling numbers for ex parte reexaminations, coupled with the elimination of inter partes patent reexamination has, in limited respects, made ex parte reexamination a more attractive option as compared to 2008.
Continue Reading Patent Reexamination Speed Presents New Opportunity
Hours ago, Celgene filed its Motion for Sanctions against the Coalition for Affordable Drugs in IPR2015-01092, 1096, 1002, and 1103. The Patent Trial and Appeal Board (PTAB) now has until October 28th to decide the issue. As I have maintained all along, these filings will be
Over the next few weeks, the PTAB in cooperation with the AIPLA and others, will be conducting several “road shows.” These programs will discuss the forthcoming PTAB rule package (assuming it issues in time) and will include an overview of AIA trial proceedings. Of particular note, at
The Patent Trial and Appeal Board (PTAB) has designated the recent decision granting a request for additional discovery in Arris Group, Inc. v. C-Cation Techs., LLC, IPR2015-00635 (Paper 10) (PTAB May 1, 2015) as an informative decision. The decision grants Patent Owner’s Motion for Additional Discovery on issues of
Last week, an expanded panel of the Patent Trial & Appeal Board (PTAB) clarified the required showings necessary to a successful motion to amend. Of note, the expanded panel included Deputy Chief Nathan Kelly as well as Vice Chief Scott Boalick. In the decision, Masterimage 3D. Inc. v. RealD Inc. (IPR2015-00040) (here), the Board clarified the meaning of the Idle Free phrase: “prior art of record and also prior art known to the patent owner.”
As outlined in Idle Free Systems v. Bergstrom Inc., (IPR2012-00027), amendment during an AIA trial proceeding is by motion. As such, the burden is on the movant to demonstrate entitlement to the patentability of amended claims. One aspect of Idle Free that movants have struggled to digest is the metes and bounds of “prior art known to Patent Owner.” In MasterImage, the Board clarified that the “prior art known to Patent Owner” is linked to the art that would trigger the Patent Owner’s Duty of Candor.
Continue Reading Expanded PTAB Panel Clarifies Idle Free Amendment Requirements
Last week, I summarized the PTAB modifications proposed in the Senate’s Patent Act” (S.1137). While there is an expectation that at least the House will try to bring “Innovation Act” (H.R. 9). to the floor for a vote, meaningful progress seems unlikely. Opposition to the bills has ramped up in recent days from conservative groups, and proponents of competing bills. Coupled with the looming five week summer recess, it is inevitable that Congress will kick the proverbial can down the road.
As pointed out previously, a rule package from the USPTO is expected in the July-August time frame that could moot many of these issues. With that in mind, a delay in legislative action would be prudent.
Tomorrow, July 14th, the USPTO’s Patent Trial & Appeal Board (PTAB) will host its third “Boardside Chat” lunch webinar for 2015 (postponed from June). The topic is “Discovery in AIA Trials.” I will be participating on the practitioner panel. (No CLE)
Instructions for the webinar
Yesterday, the CAFC issued its long awaited decision in the dispute between Versata and SAP (here). The appeal stemmed from the very first Covered Business Method (CBM) patent challenge proceeding. On appeal, one of Versata’s (patentee) main challenges was directed to the statutory definition of “covered business method” and “technological invention” as applied by the Patent Trial & Appeal Board (PTAB) in instituting the CBM proceeding. That is, Versata’s argued that its patent did not qualify as a CBM patent, and, therefore, the PTAB had no right to institute the review.
In rejecting Versata’s arguments, the CAFC found that the PTAB applied the appropriate definitions. All other issues were also decided against Versata, including the determination that 101 challenges were appropriate for CBM proceedings, whether or not BRI may be applied in PTAB proceedings (earlier decided in Cuozzo decision) and that the Versata patent was unpatentable as being directed to an abstract idea (price calculations). Seems the Court has become quite the “death squad” for patentee appeals, affirming the PTAB in almost all but rare exceptions.
Yet, while a loss on all fronts for Versata, on the bright side, Versata was already paid several hundred million dollars from SAP last fall — for infringing Versata’s abstract ideas.
Continue Reading CBM Patent Need Not be Directed to Financial Sector