The PTAB is holding a two-day, all hands meeting this Tuesday and Wednesday (October 21-22). The PTAB will Webcast for the public the State-of-the-Board Address by Chief Administrative Patent Judge James Donald Smith on Tuesday morning at 10:45 – 11:15 a.m. Webcast information (here)
The extended deadline for responding to the June 27, 2014 Federal Register Notice entitled: Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board expires tomorrow, October 16th. The USPTO published the request for comments to gather commentary on all aspects
The Patent Trial & Appeal Board (PTAB) has announced Detroit Region Roadshows from November 5-19, 2014, focused on the AIA trials. The PTAB will visit Detroit, Chicago, Pittsburgh, Cleveland, Minneapolis, and Milwaukee for half-day, afternoon programs.
The roadshows are designed to be interactive, including audience participation in an educational game show (which couldn’t possibly be any geekier unless they required everyone to dress in Star Wars costumes) as well as a hands-on workshop.
Continue Reading PTAB Announces Mid-West Roadshow
Last Friday, the Patent Trial & Appeal Board (PTAB) designated seven informational decisions. In each decision, the Office denied institution of an inter partes review (IPR) under 35 U.S.C. § 325(d). This statute permits the Director to take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. The new informative decisions are:
These decisions demonstrate
Yesterday, the Patent Trial & Appeal Board (PTAB) issued a rare expanded panel Order in Target Corp. v. Destination Maternity Corp., (IPR2014-00508) (here). In the Order, a divided panel denied issue joinder under 35 U.S.C. § 315(c) as a matter of law (i.e., the joining of two petitions of a same petitioning party). The decision is especially surprising given the fact that 315(c) has been interpreted by the PTAB as permitting such joinder practices to date.
The Order is not designated precedential, or even informative — for this reason, it is especially troubling. Such a deeply divided panel of well respected APJs potentially tarnishes the Board’s reputation with the public as a predictable and consistent forum. This is because it may foster the perception that panel assignment may be outcome determinative. Moreover, if the majority view is adopted it could increase litigation gamemanship known to frustrate the ability of patent challengers to effectively utilize the PTAB.
Continue Reading PTAB Divided Over Practice of Issue Joinder
Is Patentee Evidence Too Much Additional Work for the Board?
As discussed previously, the USPTO has issued a Request for Information (RFI) entitled, Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board. The RFI poses 17 questions, two of which were addressed in previous posts. Namely: Is there any circumstance where a broadest reasonable claim interpretation (BRI) should not be used for an unexpired patent? (here); and, Should any changes be made to motion to amend practice? (here)
Next up is the third query of the list:
3. Should new testimonial evidence be permitted in a Patent Owner Preliminary Response? If new testimonial evidence is permitted, how can the Board meet the statutory deadline to determine whether to institute a proceeding while ensuring fair treatment of all parties?
Continue Reading PTAB to Permit New Evidence with Preliminary Responses?
The obviousness of a claimed invention is assessed from the perspective of a hypothetical person of ordinary skill in the art (POSITA). For this reason, the degree of skill present in a given art is often contested by parties to a patent litigation. Often times, patent challengers assert a higher level of skill, which favors an obviousness determination. Conversely, patentees advance a lesser level of skill, militating in favor of patent validity. Yet, outside of highly specialized fields, such disputes are of rare consequence in the predictable arts.
The USPTO’s Patent Trial & Appeal Board (PTAB) rarely pronounces a precise level of skill, instead relying on In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board did not err in adopting the approach that the level of skill in the art was best determined by references of record). Given this, patent challengers in the predictable art rarely give much thought to advancing a precise level of skill in their post-grant challenges.
As made clear last week by the Court of Appeals for the Federal Circuit (CAFC), setting the level of skill could be especially important for art subject to a non-analogous art attack.
Continue Reading Anticipating Non-Analogous Art Arguments at the PTAB
Inter Partes Review (IPR), Post-Grant Review (PGR) and Covered Business Method (CBM) proceedings of the Patent Trial & Appeal Board (PTAB) begin with a Trial Order that includes substantial guidance on matters of claim construction. Typically, key terms at issue in the proceeding are expressly construed by the panel of administrative patent judges (APJs). While such constructions are not binding on a parallel litigation proceeding due to the use of a different claim construction rubric by the USPTO, in some circumstances such findings can be devastating to a litigation campaign — well in advance of the typical Markman Order.
Continue Reading Leveraging PTAB Claim Analysis in the District Court
Prior to passage of the America Invents Act (AIA), patent reexamination was the only option available for patent challengers at the USPTO. But, patent reexamination lasted for years through appeal, especially inter partes patent reexaminations. For this reason, outside of those few patent disputes where the co-pending litigation was stayed, the reexamination became just another battle of attrition. As litigation costs mounted accused infringers were forced to settle independent of reexamination progress.
For non-practicing entities (NPEs) losing the patent at the end of a 5-7 year reexamination battle was less of a concern after extracting business value from the patent. So, even where the reexamination produced compelling evidence of unpatentability, amendment of originally issued claims was relatively uncommon. This is because amending original claims created obvious intervening rights problems, and might increase the chance of a litigation stay. NPEs preferred losing slowly to a claim amendment that would prevent monetization over several years of reexamination processing and appeals.
The AIA not only broke the attrition model at the USPTO with its speed, but is forcing amendments of original claims at a much higher rate than in patent reexamination. There has been a significant focus on amendment practice before the PTAB. as such motions have rarely succeeded. For this reason, the PTAB is seeking feedback on motion to amend practice, the Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board asks:
2. What modifications, if any, should be made to the Board’s practice regarding motions to amend?
Continue Reading Why Motions to Amend at the PTAB Are of Such Great Interest
Back in June, the USPTO issued a Request For Information (RFI) in the Federal Register. The Notice, entitled, Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board posed 17 questions for consideration by those stakeholders involved in the patent challenge proceedings of the America Invents Act (AIA). Responses are due to the USPTO on September 16th, and, will be considered by the agency for the purpose of optimizing AIA trial proceedings going forward.
Over the next two weeks, I will explore the issues driving these queries as well as proposals for resolving problem areas. First up, is the question directed to claim construction, that is:
1. Under what circumstances, if any, should the Board decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?
Continue Reading The PTAB Cannot Adopt a Phillips Claim Analysis for AIA Trial Proceedings