Patent Trial & Appeal Board

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PTAB Rejects Early Motions to Exclude as Improper

The Patent Trial & Appeal Board (PTAB) has begun issuing a steady stream of final written decisions in Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings. In these initial decisions, the Board is denying a significant number of improperly filed motions to exclude from both petitioners and patentees alike. Specifically, the Board is urging that a proper motion to exclude is not filed to: (1) challenge the sufficiency of the opposing parties evidence; (2) serve as a sur-reply; or (3) attack evidence raised in petitioner filings as being “new.” Instead, a proper motion to exclude must be keyed to an earlier made evidentiary objection.

While the PTAB is diligently educating the public on the proper motion practice in the initial wave of decisions, failure to heed the guidance in these initial decisions may result in attorney sanctions down the line.…

Continue Reading PTAB Explains Proper Role of Motions to Exclude

Indemnification Obligation May Trigger IPR Clock

Indemnification from a claim of patent infringement is a common warranty in contractual agreements for the exchange of technological goods. In the event of an infringement claim against the contracted goods/services, a demand for indemnity triggers a duty of the supplier to defend against the claim in some manner, typically funding the defense, or taking over responsibility for the defense effort. As I discussed previously, indemnification clauses require special attention after the America Invents Act (AIA).

Recently, in Atlanta Gas Light Company v. Bennett Regulator Guards Inc., (IPR2013-00453, Paper 31, January 22, 2014) the Patent Trial & Appeal Board (PTAB) analyzed the interplay of an indemnification obligation as it relates to 35 U.S.C. § 312(a) and the 12 month window of 35 U.S.C. § 315(b). That is, does the existence of a contract/indemnification clause create privity between the contracting party under the IPR statutes, or render an indemnitor a real-party-in-interest with respect to the indemnified party?
Continue Reading Beware: Indemnification May Create Privity Under IPR Statutes

Post Grant CLE Tomorrow at USPTO

Just a reminder that the 9th Annual Advanced Patent Law Institute is underway at the United States Patent & Trademark Office (USPTO. This two day program offers several post grant patent discussions tomorrow, including:  AIA Practice Tips Before the Patent Trial and Appeal Board; Post-Grant Proceedings, Strategies and Practice…

Statistics Demonstrate Staggering Demand for PTAB Patent Challenge Proceedings

Last week, the USPTO issued the official tallies/progress statistics for Inter Partes Review (IPR), Post Grant Review (PGR) and the Covered Business Method (CBM) proceedings. As of January 9, 2014 the Patent Trial & Appeal Board (PTAB) has received 810 IPR petitions and 108 CBM petitions…

AIA patent prosecution

PTAB Review Proceedings Force Change to Age Old Patent Prosecution Paradigm

As Bob Dylan once warned, you better start swimmin’ or you’ll sink like a stone….the times they are a changin.‘ While Bob clearly had some broader ranging social issues on his mind when he penned those lyrics, they are quite befitting of the outdated philosophies driving most U.S patent prosecution practices in the aftermath of the America Invents Act (AIA).

I’m not talking about the change over in March 2013 from the first-to-invent system to the first-inventor-to-file system of the AIA, but instead, the de facto switch in September 2012 from the “infringement first” philosophy of patent prosecution to the new, balanced patentability/infringement model. That is, before the introduction of the AIA post grant challenge mechanisms, Inter Partes Review (IPR), Post Grant Review (PGR), and the transitional program for Covered Business Method Patents (CBM), securing a maximum claim breadth was the primary driver of patent prosecution practices — the broader the better.

The infringement first philosophy is now dead— as will be your patent portfolio unless you change your tune.

Continue Reading Post Grant Proofing Your Patent Portfolio

CAFC

USPTO Appeals to Grow for CAFC

In 2013 the patent-challenging public took notice of the USPTO’s Patent Trial & Appeal Board (PTAB) in a big way. With as many as 100 post-grant patent challenges being pursued per month at the PTAB, the unique considerations required to successfully navigate these proceedings from the PTAB on through…

PTAB Begins Front Loading IPR & CBM Schedules

The new patent challenge proceedings of the USPTO’s Patent Trial & Appeal Board (PTAB) are instantly distinguishable from the previous examiner-based, patent reexamination—perhaps most notably in speed. That is, an Inter Partes Review (IPR), Post Grant Review (PGR) or Covered Business Method (CBM) must conclude, by statute, within 12 months of institution. This turnaround is a dramatic improvement over the 3-5 year pendencies that plagued patent reexamination. For this reason, the PTAB has been a major disruption to the business of patent licensing and assertion in the U.S; especially to that of the dreaded “patent troll.”

For patentees faced with a PTAB post grant challenge it’s only getting worse. As of mid-December, the PTAB has accelerated trial schedules so that oral argument is scheduled a mere 7 months from trial institution. This is a full two months earlier than the previous default schedule.…

Continue Reading PTAB Accelerates Post Grant Trial Schedules by Two Months

Are NPE Judgments Under Attack?

The primary business distinctions between the USPTO Patent Trial & Appeal Board (PTAB) proceedings and traditional court based patent invalidity proceedings are the vast improvements in cost, predictability, effectiveness, and speed of PTAB proceedings— but it is the speed and effectiveness that is the most disruptive to the patent litigation landscape.

As was made very recently apparent in Fresenius USA v. Baxter Int’l. (Fed. Cir. 2013), a damage judgment is not necessarily safe from collateral attack unless and until it is actually satisfied by the putative infringer.

Since Fresenius, most patentees have taken solace in the fact that such a patent reexamination based fact pattern is exceedingly rare. Yet, if you are one of the many plaintiffs sitting on a large verdict, you will have a new worry in the months ahead—the PTAB troll.…

Continue Reading The Rise of the PTAB Troll

CAFC Considers Article III Injury Requirement for Dissatisfied Patent Challengers

Earlier this week, the CAFC heard oral arguments in Consumer Watchdog v. Wisconsin Alumni Research Foundation (Warf). Although seemingly a routine appeal from an inter partes patent reexamination, the Court took interest in the unique procedural posture of this case a few weeks before argument on the merits. Here, the challenged claims of the patent were confirmed as patentable by the USPTO and appealed by the challenger, Consumer Watchdog, to the CAFC. The CAFC ordered late briefing on the question of Article III standing for CW’s appeal. CW brief (here), WARF brief (here)

For simple folk like me, the question of standing would seem to have a relatively straight forward response. That is, appeal from a PTAB decision is provided, by statute (old 35 U.S.C. § 315 (b)(1), to any party dissatisfied with a decision of the PTAB. This appeal right was actually added in 2002 as the original inter partes reexamination passed in 1999 had no such right. Section 13106 of Public Law 107-273, 116 Stat. 1758, 1899-1906 (2002). So, not only was standing conveyed by Congress, it was conveyed only after denying it in the first legislative go-round. (fact pattern seems rather persuasive to me)

While the CAFC was well aware of the statute, they seemed to be seeking more of an “injury” from the appellant to convey Article II standing, or some kind of indication in the legislative history that Congress intended to convey Article III standing.…

Continue Reading CAFC Requests USPTO/Gov’t Weigh In On Third Party Standing for Appeals From PTAB

Patentees Squeezed Between Competing PTAB Rules

The rules of the new patentability trials of the America Invents Act (AIA) are designed to ensure timely resolution of patentability disputes within the statutorily mandated 12 month time frame. In particular, the Patent Trial & Appeal Board (PTAB) fashioned their new rules to prevent the notorious delays and complications of the previous inter partes patent reexamination system. One way in which the new AIA post grant proceedings are vastly different from the previous inter partes patent reexamination model is the manner in which claim amendments may be proposed.

In the previous inter partes reexamination system, any number of amended claims could be added or submitted prior to the close of prosecution before the examiner. There was no numerical limit on the number of claims that could be submitted. In fact, it was not uncommon practice for patentees to submit hundreds of new claims. By doing so, patentees made it more difficult for the third party to respond to all issues within their 30 day period, and within page limits. Likewise, the addition of such extensive amendments made examiner/APJ processing all the more tedious and time consuming.

In the new AIA proceedings, Inter Partes Review (IPR) and Post Grant Review, the PTAB provides for a reasonable number of substitute claims. 37 C.F.R. § 42.121/221. The “reasonable” aspect has been explained as a one-to-one correspondence in the typical case. Further restricting the ability to amend is the requirement that amendments be presented within the bounds of a 15 page motion to amend. The combination of these controls strictly limits the ability of patentees to amend in any significant regard, which greatly aids the agency in completing the proceedings in a timely manner.

Yet, patentees argue that these strictly enforced procedural controls are inconsistent with the patentee estoppel that attaches to a failed PTAB proceeding.…

Continue Reading Are Strict PTAB Amendment Practices Inconsistent with Patentee Estoppel?