Patent Trial & Appeal Board

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Tweaks to Strict Motion Guidelines Are in Order

Since the passage of the America Invents Act (AIA) the Patent Trial & Appeal Board (PTAB) has successfully fulfilled it’s charge as a speedy, cost effective alternative to patent litigation. The PTAB has been so effective in cancelling patent claims, based on the limited, preliminary results, that the Board is being criticized as anti-patent. As discussed earlier this week, this criticism is unfounded as the USPTO will always be a significantly more patent challenger friendly forum relative to the district court. Still, there is another aspect of the early statistics that patentees find of equal concern, the perceived impossibility of successfully amending the claims of a patent during a PTAB challenge.

To date, the PTAB has not granted a single motion to amend.

The PTAB properly points out that that there is a very small sample of cases in which amendment has even been attempted, and a successful motion is expected to be issued shortly. Yet, the current statistical situation (as transient as it may be), coupled with the fact that the strict motion to amend guidelines have always been viewed unfavorably, is resulting in a bit of a black eye. This at a time when maintaining the BRI standard in PTAB proceedings is being justified based upon the ability to amend.

To the Board’s credit, the current round table initiative is designed to receive feedback for the purpose of revising some rules of practice. To this end, below are some changes that I believe would improve patentee prospects for amendment while maintaining the PTAB’s mission to expeditiously decide these important, but complex issues of patentability.
Continue Reading Improving PTAB Motion to Amend Practice

Critics Ignore Long Standing Realities

Critics of the Patent Trial & Appeal Board (PTAB) are out in force decrying the work of the PTAB as anti-patent. This criticism flows from the unfavorable outcomes of the 30 or so concluded Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings to date. That is, some consider the heavy number of claim cancellation decisions as evidence of a bias against patentees. Nothing could be further from the truth.

First, patents now being asserted were drafted to survive district court scrutiny. As is well known, when in court, patentees benefit from a clear and convincing evidentiary standard, a presumption of patent validity, and a non-technical audience. Due to the significant obstacles of demonstrating invalidity before a court, infringement concerns have been the primary driver of patent procurement practices to date. For this reason patents are routinely procured to obtain the broadest possible claim scope for the purpose of ensnaring infringers; often times overly broad.

On the other hand, the PTAB counteracts each …
Continue Reading Speed of PTAB Fuels Criticism of Initial Trial Results

PTAB roundtableRoundtable Discussions to Spur Dialogue on Possible Rule Changes

Roughly eighteen months have passed since the USPTO’s implementation of the new post grant patent challenges of the America Invents Act (AIA). Since the rules for implementing these post grant patent proceedings were developed under an aggressive time schedule, as promised, the USPTO is now revisiting those rules. In the months ahead, the USPTO will be considering whether revisions/refinements to the Patent Trial & Appeal Board’s (PTAB) rules are in order. To kickoff the effort, the PTAB will be conducting informational/roundtable discussions around the country. Once the roadshows are concluded, the USPTO is planning a Federal Register Notice this summer to collect additional stakeholder comments.

The roadshow agenda includes a discussion of AIA trial statistics, lessons learned, and techniques for successful motions practice.  The roundtables are free and open to all with seating available on a first-come, first-served basis. Stops include, Alexandria (webcast available), New York, Chicago, Detroit, Santa Clara, Seattle, Dallas, and Denver.

Schedule and agenda are posted below.
Continue Reading PTAB Roadshow Effort Kicks Off in Alexandria on 4/15

Stringent PTAB Amendment Process to Drive Patent Reissue Filings

As discussed previously, patent owners continue to struggle with the motion-based amendment requirements of the USPTO’s Patent Trial & Appeal Board (PTAB). In recent months, patentees subject to Inter Partes Review (IPR) and Covered Business Method (CBM) challenges have begun exploring alternative USPTO avenues for presenting amendments. In particular, patentees are following the advice of the PTAB and initiating patent reissue and reexamination proceedings.

Patentees generally find patent reexamination more attractive than patent reissue. This is due to the special dispatch accorded a patent reexamination, the relatively narrow scope of prior art review, and insulation from 112 and 101 issues. However, as made clear recently, patent reissue may be the only escape for patentees struggling at the PTAB.…

Continue Reading Patent Reissue as an Alternative to PTAB Amendment Practice

Supreme Court Considers Patentable Subject Matter Eligibility…Again

The closely watched case of Alice Corp. v. CLS Bank was argued before the Supreme Court of the United States this past Monday. The Court is not expected to radically depart from their significant precedent on patentable subject matter. Yet, the decision will be especially relevant to Covered Business Method (CBM) challenge proceedings before the USPTO’s Patent Trial & Appeal Board (PTAB). Below are some thoughts on the oral argument from my partner Michael Kiklis. Mike has recently authored the treatise entitled The Supreme Court on Patent Law.
Continue Reading Insights From the CLS Bank Argument

Bio/Pharma Patentee Challenges Ahead

As discussed last week, the USPTO’s Patent Trial & Appeal Board (PTAB) offers significant benefits to generic drug companies seeking to enter the market of a branded competitor. That is, the PTAB offers a short circuit to expensive district court litigation for challenging high value drug patents.

In addition to the proceedings discussed last week, three recent PTAB decisions involving DNA sequencing patents owned by the Trustees of Columbia University in the City of New York, the PTAB cancelled all challenged claims in the three patents, IPR2012-0006 and 00007 and IPR2013-00011. While not technically drug patents, their fate is indicative of what the drug industry faces in PTAB challenges. …
Continue Reading Is Branded Bio/Pharma Adequately Preparing for the PTAB?