Post-Grant Review

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Petition Dismissal is Appropriate for Improper Use of PTAB Resources
(This post ran yesterday on IPWatchdog.com for those that may have missed it.)

I first discussed the potential abuse of PTAB post-grant patent trial proceedings back in 2013.  Since that time, attempts by profiteers to leverage the PTAB for improper purposes have failed. The most recent incarnation of this strategy is being advanced in the name of Hayman Capital, a hedge fund. As detailed Wednesday by IPWatchdog.com, a recent Wall Street Journal article outlined the true purpose of these filings is to influence stock prices of smaller bio/pharma patent holders to the negative (via PTAB IPR filings) while simultaneously investing in their close competitors. The Journal also explains that members of the fund invest a minimum of $1million each, with Hayman Capital earning a 20% return.  The Journal notes that those behind the filings have also created an organization referred to as the “Coalition for Affordable Drugs,” but strongly implies this entity exists only for optics.

With the negative publicity surrounding these filings, and, if true, their reported abusive purposes, can the PTAB shut them down?
Yes, and I expect that they will.
Continue Reading Why Hedge Fund PTAB Filings Will Fail

B&B Hardware Emphasizes Risks of Patentee Legislative Initiatives

A week back the U.S. Supreme Court decided B&B Hardware, Inc. v. Hargis Indus., Inc., No. 13-352, slip op., 575 U.S. __ (2015). In B&B, the Court held that a decision of the Trademark Trial and Appeal Board (TTAB) can have preclusive effect in subsequent district court proceedings (if the requirements of issue preclusion are otherwise met). That is, the Court determined that the action of an administrative agency can preclude later litigation of the “same issue” in a district court.

At present, the claim construction analysis employed by the Patent Trial & Appeal Board (PTAB), broadest reasonable interpretation (BRI), is considered different than the Philips construction employed by the district courts. For this reason, a claim construction ruling of the agency is not binding in a subsequent litigation pursuant to B&B. Yet, patentees urge that the use of what they consider to be an unfairly broad read of their claims (BRI) at the PTAB leads to improper cancellation of their patents. As I have pointed out previously this is a misguided belief. Different interpretations of a same patent claim term can be found, yet, in my view a proper determination is rarely different under either standard. Nevertheless, to cure this perceived inequity, patentees have consistently urged the PTAB to adopt the Philips analysis of the district courts for AIA trial proceedings. 

Yet as B&B makes clear, if the exact analysis used by the district court (i.e., Philips) is adopted by the PTAB, patentees may be stuck with it. This would put patentees in a far worse position than present. 

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Continue Reading Philips Construction at PTAB…Still Want it After B&B Hardware?

Upcoming PTAB Programs

The USPTO’s Patent Trial & Appeal Board (PTAB) will host a “Boardside Chat” lunch webinar tomorrow, April 7th. This month’s chat will focus on “Do’s and Dont’s of Ex Parte Appeals.”  The bi-monthly chat program updates the public on current Board activities and initiatives. Tomorrow’s dial-in is as follows:

Webinar…

PTAB Definition of “Proceeding” Found Inconsistent With the Law

Yesterday, in Intellectual Ventures II LLC v. JPMorgan Chase & Co. (here), the CAFC considered whether or not the interlocutory jurisdiction of Section 18 of the America Invents Act (AIA) is triggered by the mere filing of a CBM petition.  In this case, JP Morgan sought a stay pending a CBM filing, which was denied by the district court.  Shortly thereafter, JP appealed to the CAFC under Section 18. The Patentee argued that appeal was improper because Section 18 only conveyed interlocutory jurisdiction for CBM “proceedings,” and the PTAB had not yet acted on the petition at the time of the appeal— that is, it wasn’t a “proceeding” unless and until instituted.

Relying on a strict read of the language of Section 18, the CAFC found that a “proceeding” followed institution.  On the other hand, the dissent pointed out that such a conclusion was not intended by Congress given that CBM is designed to serve as a litigation substitute.  

While the dissent is certainly correct as to goal of the CBM statutes, the unambiguous nature of statutes rule the day.  Given the efficacy of CBM filings to date, perhaps we will see a technical amendment along these lines. (should any additional patent reform legislation ever make it out the door).  

Of greater interest to me, however,  is the CAFC’s commentary in this decision on the PTAB’s rules defining  “proceeding.”  PTAB rules (37 C.F.R. § 42.2) define a “proceeding” as being “a trial or preliminary proceeding.”  A “preliminary proceeding” is defined as starting with the filing of a petition. The CAFC indicated that such an expansive definition of “proceeding” is inconsistent with the AIA statutes.  What is the impact of this decree on the agency?

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Continue Reading CAFC Ruling Calls Into Question PTAB Settlement Authority

AIA Trial Practice & Procedure Mature & New Trends Emerge 

The Patent Trial & Appeal Board (PTAB) has reached steady state in terms of work flow. The number of final decisions (delayed by the 18 month pre-trial and trial phase) are now tracking the significant petition filing rate that began in 2013. The decisions coming due today pertain to late 2013 petition filings. As the work has increased, several trends have emerged.

The most noteworthy trends are detailed below.
Continue Reading PTAB Trends — Spring 2015

Page Limit Changes Effective Immediately for All AIA Trial Filings

The USPTO’s Patent Trial & Appeal Board (PTAB) has announced some of their “quick fix” rule changes today in advance of the anticipated Federal Register Notice.  In addition to expected changes to page limits, the Director also mentioned other changes that may be proposed through typical notice & comment rule making later this year.  The immediate changes are directed to page limits, including:

Page Limits
-Motions to Amend are now limited to 25 pages (formerly 15 pages), and the claims may be attached as an appendix.
-Petitioner Reply Briefs are now limited to 25 pages (formerly 15 pages)

Later this year, more significant changes will be proposed, but are unlikely to be finalized until 2016, including:

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Continue Reading PTAB Moves Forward on Quick-Fix Rule Changes

Patentees: Be Careful What You Wish For…You Just Might Get It

Since the passage of the America Invents Act (AIA), the debate has raged as to whether or not the Patent Trial & Appeal Board (PTAB) should apply the broadest reasonable claim interpretation (BRI) for AIA trial proceedings. Some patentees and bar associations have been shortsightedly advancing the notion that BRI should not be employed in the patent challenge proceedings of the AIA (Inter Partes Review (IPR) and Post Grant Review (PGR)). Instead, they urge that BRI claim construction be replaced with the claim construction practices of the district court (i.e., Philips v. AWH). This is because, they argue, the new AIA proceedings are more “adjudicative in nature” as compared to past patent reexamination practices…and amendment isn’t really possible.

Yet, if Philips were adopted by the PTAB, patentees would see little in terms of benefit. In fact, such a change would likely make matters far worse for patentees. …
Continue Reading A Philips Construction at the PTAB Will Halt Patent Litigation

Misguided STRONG Act Would Undo Years of AIA Progress

Well, if you expected the Goodlatte Bill to sail through the House for swift passage through the Senate, forget about it. Hill chatter has indicated that the significant House support of the Bill has diminished since the last vote in 2013 (and rightfully so given the events of the past year). Perhaps of greater threat to the patent reform effort , however, is yesterday’s introduction of the “STRONG Act” on the Senate side (here), which makes clear that further patent reform is far from guaranteed for 2015. 

The STRONG Act, or “Support Technology and Research for Our Nation’s Growth Patents Act of 2015” removes the controversial fee shifting provision of the Goodlatte Bill (a key point of contention in past battles). More importantly, the Senate Bill adds a multitude of proposed changes to AIA trial proceedings that will have patent abusers dancing in the streets —the Bill is more aptly titled the “Support Trolls & Reverse Our Nation’s Progress under the AIA Act of 2015.” 

While this legislative grenade may not have much chance ever seeing the light of day, it is surprising that such misguided proposals would be seriously offered in the first instance.
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Continue Reading Senate Democrats Propose Bill to Gut AIA Trials

Agency Discretion Dictated by Petitioner Joinder Rationale

As discussed previously, in Target Corp. v. Destination Maternity Corp (IPR2014-00508) a divided PTAB panel permitted issue joinder. While the dissent argued that acceptance of issue joinder might permit a proverbial “second bite at the apple,” the majority countered that such gamesmanshp could be thwarted by judicious use of agency discretion.

As I have pointed out, petitioner’s sometimes exclude claims from an IPR petition that are not asserted against them in an ongoing litigation. For example, a complaint is filed alleging infringement of claims 1-10, but not claims 11-15. After the 12 month IPR window has passed, and the IPR for claims 1-10 is timely filed, the patentee may then amend their complaint to add claims 11-15. In this way. when the motion to stay pending IPR is argued, the patentee emphasizes that claims 11-15 are not part of the IPR. That is, there is no reason to “stay” as trial will be necessary for claims 11-15 regardless of the IPR outcome. In such a case, issue joinder would seem warranted— as opposed to a case in which the petitioner fails as to claims 11-15, but files a second petition as a “do-over.”

It seems the PTAB agrees, as demonstrated recently in Amneal Pharmaceuticals LLC. v. Endo Pharmaceuticals Inc. (IPR2014-01365, Paper 13, February 4, 2015).

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Continue Reading PTAB Balances Gamesmanship Interests for Issue Joinder