Non-registered practitioners may, in limited circumstances, be permitted to appear before the Patent Trial & Appeal Board on a pro hac vice basis. 37 C.F.R § 42.10(c). Last week, I pointed out the expanded panel order of the PTAB in IPR2013-00010 (order here), which outlined the
The new post grant trial proceedings of the Patent Trial & Appeal Board (PTAB) provide game changing opportunities for patent challengers. These opportunities include the virtual guarantee that certain business method patent litigation will be stayed pending the outcome of a Covered Business Method (CBM) patent challenge, and the ability to challenge an entire portfolio at one time. Indeed, the later opportunity was never before possible in any proceeding, USPTO, district court, or otherwise.
Yet, the new proceedings are not without some risk. For example, Inter Partes Review (IPR), much like its’ predecessor inter partes patent reexamination, operates to estop the challenger from making arguments in a later proceeding that were either raised or “could have been raised” in the previously concluded PTO proceeding. This “could have been raised” estoppel was revised for IPR proceedings, slightly, to embrace issues that “reasonably could have been raised.” The legislative history indicates that this change was designed to impart some term of degree of practicality to the new IPR estoppel standard.
While the prospective estoppel that may apply to petitioners of IPR proceedings has been softened, unlike patent reexamination requests, IPR petitions are limited to 60 double spaced pages. So, practically speaking, there are a limited number of issues that can be presented in 60 double spaced pages.
How will this IPR page limitation impact the “reasonableness” analysis of the district court?
Continue Reading Hedging Against Petitioner Estoppel at the PTAB
Non-registered practitioners may, in limited circumstances, be permitted to appear before the Patent Trial & Appeal Board on a pro hac vice basis. 37 C.F.R § 42.10(c). In a previous discussion on this topic, I relayed the explanation of Chief Judge Smith that was provided on the USPTO website (America Invents Act (AIA) micro site) relative to the philosophies behind the PTAB’s pro hac vice rule proposal.
Earlier this month, an expanded panel of the PTAB issued the first order authorizing motions for pro hac vice admission in (IPR2013-00010) (order here).
The Order outlines the requirements for the motion an accompanying declaration as follows:
Continue Reading PTAB Issues Order Outlining Base Pro Hac Vice Qualifications
Court Troubled by Own Inconsistent Precedent
As explained very recently by Director Kappos, the USPTO has a well established practice of applying a broadest reasonable claim interpretation (BRI) in proceedings before the USPTO. For this reason, Director Kappos explained that although the AIA was silent on the type of claim analysis to be applied in the new post grant proceedings of the Patent Trial & Appeal Board (PTAB), BRI was deemed necessary for, inter alia, administrative consistency.
Yesterday, in Flo Healthcare Solutions, LLC. v. Kappos, the CAFC advanced a similar consistency theory in questioning whether or not USPTO claim constructions should be reviewed under a de novo standard, as is the court’s routine practice. Or, whether the USPTO’s constructions should be entitled to a different, “reasonableness” analysis as enunciated in some of the court’s more recent precedent. (decision here)
Continue Reading CAFC Contemplates De Novo Review of USPTO Claim Constructions
Today the USPTO will publish a notice in the Federal Register to update the USPTO Rules of Professional Responsibility and to revise procedures for disciplinary investigations and proceedings. (reading room copy here). The notice explains that the notice of proposed rulemaking is designed to align USPTO Rules of Professional
As discussed last week, the Transitional Program for Covered Business Method Patents, or “CBM” proceeding offers significant advantages to qualifying patent challengers. While technically a Post Grant Review (PGR) proceeding, CBM is free of the Draconian estoppel provision applied to PGR. CBM estoppel is limited to those grounds actually raised in the proceeding (that is, there is no “reasonably could have raised” estoppel as in PGR).
More specifically, Sec. 18 of the America Invents Act (AIA) defines a CBM proceeding as following the “standards and procedures of PGR with the following exceptions:
Section 321(c) of title 35, United States Code, and subsections (b), (e)(2), and (f) of section 325 of such title shall not apply to a transitional proceeding.
-Section 321(c) is the nine month window employed in PGR.
-Section 325(b) precludes stays of court actions when a motion for preliminary injunction is pending.
-Section 325 (e)(2) defines PGR estoppel (“raised or reasonably could have been raised”)
-Section 325 (f) precludes PGR for certain reissue patents.
By eliminating the “reasonably could have been raised” aspect of PGR estoppel the CBM proceeding ostensibly presents a “free shot” proposition for patent challengers….but, unsuccessful CBM challengers may be surprised to learn that PGR estoppel will apply to the challenger in later, USPTO proceedings.
Continue Reading The Asymmetric Estoppel of Business Method Patent Challenges
Last September 16th marked the one year anniversary of the enactment of the America Invents Act (AIA). This “patent reform” legislation introduced several new post grant avenues to challenge an issued patent at the USPTO. One of these new options is the very specialized, Transitional Program for Covered Business Method Patents, or “CBM” proceeding.
The CBM option is noteworthy in several respects: first, it is a post grant review challenge that is limited to a special class of patents (i.e., “covered business method” patents); second, only those challengers that have been sued or charged with infringement of a covered patent may petition the USPTO to initiate a CBM proceeding; third, the estoppel is limited to those grounds actually raised in the proceeding (that is, there is no “reasonably could have raised” estoppel); and finally, the CBM statutes include unique controls that virtually ensure that any ongoing litigation at the time of a CBM filing will be stayed pending USPTO review.
As explained above, the CBM proceeding presents an insignificant of estoppel risk. This “free shot” combined with the near certain stay of costly court proceedings presents a “pay to stay” opportunity that qualifying defendants may find hard to resist.
Continue Reading Pay to Stay….The Game Changing Impact of Business Method Patent Challenges
For those that may have missed the various CLE programs and USPTO road shows of the past few weeks, video highlights of the AIA Roadshows are posted on the USPTO web site (here). Also, a very comprehensive slide deck covering all AIA changes effective on September 16, 2012
Over the past few weeks, commentators have been buzzing about the ability/inability to challenge a patent on the grounds that the claims are not directed to statutory subject matter (35 U.S.C. § 101). Under the discussed theories, a 101 challenge is not a statutory basis for invalidity, and, as such, is necessarily excluded from the available grounds to initiate Post Grant Review (PGR) and the Covered Business Method (CBM) Challenge. I, for one, never quite followed the logic of this argument as it seemed to ignore the reality of the controlling case law on point (if not the explicit legislative history of the AIA).
This past Monday, USPTO Director Kappos explained (quite correctly in my opinion) that PTAB patentability challenges embrace 101 grounds (ttp://www.uspto.gov/blog/”>here).
The Director explains that:
Continue Reading Section 101 as a Basis for a Post Grant Patent Challenge
Two weeks back I discussed the “patentee estoppel” impact of Rule 42.73(d)(3)(1). As a reminder, when a patent claim is cancelled or finally refused in a validity trial proceeding of the Patent Trial & Appeal Board (PTAB), the Patentee is thereafter precluded from taking an inconsistent action before the USPTO. This preclusion includes, obtaining in any patent, a claim that is not patentably distinct from the finally refused or cancelled claim.
In the earlier post, I discussed how the final refusal or cancellation of a patent claim could have a devastating impact on active continuation patent application portfolios. This is because when a parent patent has a broad, generic claim cancelled or refused in a post grant trial of the PTAB, the Patentee is estopped from pursuing a continuation (or reissue) application presenting claims of indistinct scope. Absent a proactive strategy, such a result would significantly undermine the investment in continuation application portfolios of large patent filers.
Perhaps even more disturbing, is the infectious nature of this estoppel relative to other, issued patents of an unsuccessful Patentee.
Continue Reading Creeping Death….The Infectious Estoppel Impact of PTAB Validity Trials