Patent Trial & Appeal Board

Subscribe to Patent Trial & Appeal Board via RSS

Filing Rate to Strain PTAB Bandwidth?

In the entire 13 year history of inter partes patent reexamination, 1919 such reexamination requests were filed. Granted, only patents that stemmed from post 11/29/99 patent applications were eligible. But still, even in 2012 (the high water mark for such filings) the USPTO received only 530 in total.

Since passage of the America Invents Act (AIA), Inter Partes Review (IPR) and Covered Business Method challenges continue to break records with each passing month. In June alone the Patent Trial & Appeal Board (PTAB) received over 190 IPR and CBM petitions. By September 16 2014, the PTAB will have seen 2000+ petition filings in 24 months.

Can the PTAB keep up with this unprecedented surge in demand?…

Continue Reading First 24 Months of IPR Brings More Filings Than Entire History of Inter Partes Patent Reexamination

Federal Register Notice to Issue Tomorrow

As promised, even a bit early, the USPTO will issue a Request for Information in tomorrow’s Federal Register. The Notice, entitled,
Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board, will pose the following 17 questions:

Claim Construction…

Free Webinar, Wednesday 6/25

Yesterday, the Supreme Court issued its long-awaited decision in CLS Bank v. Alice Corp. on patent eligibility standards for computer implemented inventions. This decision will impact current 101 challenges in CBM proceedings, and shape patent procurement/claiming strategies for software related methodologies going forward.

Please join me and my authoritative panel for…

District Court Stays on the Rise Thanks to PTAB

Prior to the passage of the America Invents Act (AIA) many district courts were less than impressed with the lengthy pendencies of patent reexamination proceedings at the USPTO. For this reason, motions to stay a litigation pending patent reexamination were often denied based upon the perceived prejudice of a 5-6 year delay (typical of reexaminations through appeal). The patent challenge proceedings of the AIA (IPR, CBM and PGR) were specifically designed, at least in part, to remedy the pendency issue.

The new patent challenge proceedings of the AIA are conducted before the USPTO’s Patent Trial & Appeal Board (PTAB) and must conclude, by statute, within 12 months of trial order. Many districts across the country have recognized the improved speed of the PTAB. Not surprisingly, the success rate for staying cases pending USPTO review has significantly improved.
Continue Reading 75% Success Rate for IPR Driven Stays

Growth in PTAB Post-Grant Filings May Require Changes to Workflow

PTABThis time last year, the Patent Trial & Appeal Board (PTAB) had about 250 Inter Partes Review (IPR) and Covered Business Method (CBM) petitions pending. Only half that number were in the trial phase.

One year later, the PTAB has received 1500 IPR and CBM petitions, roughly half of which are now in trial phase. The surge in filings over the past two months has been especially pronounced, averaging 150 petitions per month. This is the new normal.

The chart below is from June 6, 2014. (Click to Enlarge)

aia_statistics_06_05_2014

As explained at the PTAB roadshow, the Trial Section of the PTAB consists of roughly 70 judges at present. (with plans to add another 52 by October). While the influx of judges will certainly help handle the growing workload, given the magnitude of trials that will soon be pending, the PTAB will need to adjust the daily workflow to maintain their 12 month trial mandate.
Continue Reading Inexperienced Attorneys Tax PTAB Resources

Article III Standing a Rare Concern at PTAB

Last week, the Court of Appeals of the Federal Circuit (CAFC) determined that public interest groups challenging patents at the USPTO must demonstrate Article III standing to appeal failed challenges to the Court. In Consumer Watchdog v. WARF, Consumer Watchdog  appealed  a determination of the Patent Trial & Appeal Board (PTAB) to uphold claims of WARF patent 7,029,913 directed to stem cell cultures (inter partes reexamination 95/000,154). (here). In dismissing the appeal, the Court explained that while Consumer Watchdog was provided a procedural right to appeal by the inter partes reexamination statutes, an “injury in fact” was necessary to confer Article III standing. That is, such appeals require “a particularized, concrete stake in the outcome of the reexamination.”  Consumer Watchdog’s status as an entity that does not compete with the patent owner was strongly emphasized in the decision. The court left “it to future panels to decide whether, under other circumstances, the preclusive effect of the estoppel provisions could constitute an injury in fact.”

While an interesting decision, such public interest challenges were exceedingly rare in inter partes patent reexamination (discontinued by the AIA in 2012). On the other hand, Inter Partes Review (IPR) has seen a fair amount of activity from such entities. For this reason, some have speculated that this decision may have a chilling effect on such filings going forward. However, since IPR challenges are not governed by reexamination procedural practices, such filings are likely to continue.…

Continue Reading IPR Joinder Limits Impact of WARF Decision

Outdated Patent Drafting Techniques Present Opportunities.

The Patent Trial & Appeal Board (PTAB) poses a significant threat to patent monetization. Not because the PTAB is anti-patent, far from it, but because the patents challenged today were drafted for the scrutiny of the district court. That is, in a district court invalidity is only found where the presumption of patent validity is overcome by a clear and convincing evidentiary showing. Given the relative low risk of this happening as compared to a non-infringement finding, patents were drafted to obtain the broadest claims possible for ensuring a clean infringement read. Of course, the attractiveness of PTAB challenges is the absence of such pro-patentee standards.

As discussed previously, now that PTAB challenges are becoming the standard, initial hurdle, patents need to be drafted differently, or “post-grant proofed.” This new PTAB centric drafting and prosecution strategy is especially critical in the predictable arts. This is because existing claim drafting strategies might also permit your competitor to game the estoppel flowing from an unsuccessful Inter Partes Review (IPR) challenge.
Continue Reading Gaming IPR Estoppel