Patent Trial & Appeal Board

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En Banc Rehearing of Cuozzo Appeal Denied

In a close decision, the Court of Appeals for the Federal Circuit (CAFC) denied rehearing in In re Cuozzo Speed Technologies (here). At issue in the request for en banc rehearing was whether or not the Patent Trial & Appeal Board (PTAB) should apply a broadest reasonable view of challenged claims, or apply a district court style construction (Philips). The majority dismissed the argument as one of legislative policy that is beyond the power of the Court to modify. Meanwhile, the dissent argued that the “new” proceedings of the PTAB were adjudicative in nature, provided limited amendment possibility, and therefore required a claim construction consistent with that applied in the courts. 

While the majority decision is short and to the point, the dissent is quite spirited.
Continue Reading PTAB’s Use of BRI Upheld …Again

PTAB Proposals on Senate Side

With Congress headed toward a summer recess in a few weeks, it is expected that the pending patent reform bills will be front and center for July. Below is a high level overview of the PTAB proposals currently embodied in the Senate’s Patent Act” (S.1137).  As previously pointed out, many of these proposals are expected to be mooted in a matter of weeks by the PTAB’s July rule package.  Perhaps PTAB movement will cool the legislative appetite for these proposals, time will tell.

1.      Preliminary Response – IPR
§ 313 is modified to add subsection (b), which enables a preliminary response to include affidavits/declarations of supporting evidence and opinions.  In addition, a petitioner may seek leave to file a response to respond to new issues raised in the preliminary response.

(PTAB expected to propose a similar modification)

2.      Institution Decision – IPR
§ 314 is modified to permit non-institution if it “would not serve the interest of justice.”  Factors considered in making this decision include whether the grounds or arguments are the same or substantially the same as those considered and decided in a prior judicial or PTO proceeding and whether there is another proceeding or matter involving the same patent before the PTO.

(appears to target hedge fund filings, but PTAB is likely to take care of that problem on its own)

§ 314 is also modified to state that an IPR shall not be instituted on the basis that the evidentiary standard at the PTO differs from the one used in a court proceeding to adjudicate the claims in the petition.

(Also appears directed to hedgies/PTAB trolls that seek to re-purpose art of a litigation)…
Continue Reading PTAB Cheat Sheet for Senate Bill

CAFC Finds Board Has Power to Vacate Institution Decision Sua Sponte

The Patent Trial & Appeal Board (PTAB) posed the following question to the public last summer in its Request for Comments:
Real Party in Interest:
5. Should a patent owner be able to raise a challenge regarding a real party in interest at any time during a trial?

Since last summer there have been a handful of IPR proceedings vacated on RPI grounds, post-institution. At the same time, the Board expresses a strong preference that motions for additional discovery on RPI be pursued as early as possible. So, while the Board has shown a willingness to vacate post-institution for improper RPI/privity designations, evidence for advancing such a deficiency (i.e., that the petitioner has failed to name a RPI/privy in its petition) is unlikely to come through PTAB discovery—for now.

This month the Board is expected to release a new rule package responsive to the feedback from last summer’s Request for Comments. The Rules are expected to provide some enhanced ability to secure additional discovery, especially as it relates to RPI.  Given the expectation of more liberal discovery on RPI in the month’s ahead, is RPI a matter of standing that might be raised at any time, even on appeal to the CAFC?

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Continue Reading Is RPI/Privity an Issue of PTAB Standing?

Evolution of PTAB Practice & Boardside Chat (AIA Discovery) for July

For those seeking PTAB related CLE/updates this month, there are a few upcoming options.

First, for an update and discussion on PTAB trial practice in light of new rule changes, legislative proposals, and anticipated rules, I, along with my partner Greg Gardella, will host…

Hedge Fund IPR Scheme Unraveling

Last week, the USPTO’s Patent Trial & Appeal Board (PTAB) authorized a Motion for Sanctions in four IPR proceedings filed by the now infamous Kyle Bass & friends. The motion for sanctions will be based on an alleged abuse of process by Bass & Co. for pursuing four IPR proceedings relating to Celgene patents 6,315,720 and 6,045,501. 37 C.F.R. § 42.12(a)(6) The sanction sought is termination of the proceedings. 42.12(b)(8). (motion here)

The motion authorization, while clearly not an ultimate decision as to the propriety of sanctions is a clear harbinger of things to come. First, as busy as the Board is, any request for additional work is strongly indicative of far more than a passing interest in the topic. Second, the authorization in these cases comes by way of expanded panel. Finally, such motions are exceedingly rare (like less than 1% of cases, rare).  If shares in Hayman Capital were publically traded— like its IPR targets— shares would be significantly down trending on this news. The game is over.

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Continue Reading PTAB Considers Unplugging Hedge Fund Filings

First Reversal of PTAB in IPR

Yesterday, in Microsoft Corp v. Proxyconn Inc. (here), the Court of Appeals for the Federal Circuit (CAFC) reversed an Inter Partes Review (IPR) determination USPTO’s Patent Trial & Appeal Board— a first.  (The decision also affirmed-in-part, vacated-in-part, and remanded-in part) The Court found that the Board’s construction of several key terms to be unreasonably broad. The IPR is now remanded for further Board proceedings on a narrowed construction.  In this sense, apart from historical significance, the decision is unremarkable.

As to IPR specific issues, the Court brushed aside another challenge to the use of the Broadest Reasonable Interpretation (BRI) standard in IPR, citing its recent Cuozzo decision. Perhaps of most interest in this decision is the commentary of the Court in affirming aspects of the PTAB’s much maligned amendment practices.

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Continue Reading CAFC Reverses & Remands IPR to PTAB

New PTAB Pilot to Allow Flexibility in Appeal Priority

Starting Friday, June 19th, the PTAB will begin a new 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 appeal. The stated purpose of the Expedited Patent Appeal Pilot is to allow appellants with multiple ex parte appeals (i.e., large patent filers) pending to have greater control over the priority with which their appeals are decided and reduce the backlog of appeals pending before the Board.  

The backlog of ex parte appeals has remained relatively constant (in the mid 20,000 range) for several years.  This backlog, coupled with much longer delays in appeal briefing cycles, effectively delays Board decision’s on ex parte appeals (outside of reexamination appeals that are accorded special dispatch) for three years, or longer. While I can’t imagine independent inventors will be thrilled with a program that allows large filers a slightly faster path to a Board decision, the hope here is that if enough participate, the backlog will shrink, benefiting all appellants. As the PTO clearly realizes, the backlog is driven by many large, U.S. patent filers that appeal as a matter of course. 

Appellants wishing to participate in the pilot program

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Continue Reading Expediting Ex Parte Appeals at the PTAB

Bio/Pharma’s Favorite Target Serves a Critical Role

Both Houses of Congress now have bills moving to their respective floors on further patent reform thanks in large part to Kyle Bass. Of course Congress had been toying with the idea of further reform long before everyone’s favorite boogeyman came along. But now, thanks to Mr. Bass, Congress has a story to sell otherwise mind numbing legislation to the masses. Keep in mind that America Invents Act (AIA) wasn’t about patents, but job creation. Remember that? The new patent reform story, at least for the significant Bio/Pharma lobby, is this: Hedge funds are devaluing drug patents to the point that and there may not be any future, ground breaking medications —unless Congress comes to the rescue. Silly, yes, but effective for advancing otherwise stagnant legislative agendas?…you betcha.

The fact of the matter is Kyle Bass has been a boon to Bio/Pharma lobbyists. His stunts (and that’s exactly what they are) allow the debate to turn away from patent quality to one of simple gamesmanship. Everyone can rally around a perceived abuse of legal process, especially when perpetrated by a vilified outsider. But the changes contemplated in the name of stopping Mr. Bass go well beyond that which is necessary. 
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Continue Reading Kyle Bass: The Inconvenient Truth

Patent Act Rewritten to Appease Bio/Pharma Lobby

In a surprising change of course, the Senate bill known as the ‘The Patent Act” (S.1137) has morphed into a PTAB reform bill. The initial version of the Bill hardly touched the patentability trials of the USPTO’s Patent Trial & Appeal Board (PTAB). A competing bill, known as the “Strong Act,” — on the other hand— proposed gutting these highly effective patent challenge mechanisms.  After the Manager’s Amendment to the Patent Act on Tuesday (here), at least with respect to the PTAB, both bills now propose significant alterations to the PTAB’s patent challenge mechanisms.

As a reminder, the impetus behind the AIA of 2011 was to thwart abusive litigation fueled by weak patents. It was argued pre-AIA that patents were issuing from the USPTO of overly broad scope and on questionable technology. These patents were then used as tools by extortionists (patent trolls) to extract large settlements from the domestic tech industry. This cottage industry was spawned from an over abundance of such patents. And, since defeating these patents in a district court was quite difficult (due to the deferential treatment of U.S. patents) and expensive, settlement was the only option. The AIA provided relief from these practices by introducing a low-cost, expedited “opposition” to such patents at the PTAB known as Inter Partes Review (IPR) and Post-Grant Review (PGR). That is, the PTAB challenge proceedings of the AIA were designed to weed out weak patents, quickly and cost effectively. These proceedings have been very effective to the delight of some of America’s largest tech companies (i.e., serial defendants).  

Since enactment of the AIA, however, many have realized that when presented with appropriate evidence, the PTAB does not discriminate.  It is not just weak troll patents that are being cancelled, and this has a bunch of folks, especially the Bio/Pharma lobby, up in arms.

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Continue Reading Senate Moves to Derail Gains of America Invents Act

June Boardside Chat on AIA Discovery

The USPTO’s Patent Trial & Appeal Board (PTAB) will host its third  “Boardside Chat” lunch webinar for 2015 today from noon to 1PM. The topic is “Discovery in AIA Trials.”  I will be participating on the the practitioner panel. 

Dial-in is as follows:
Webcast Instructions…