Post-Grant Review

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Fall 2014 Preview

With the summer vacation months behind us, the USPTO approaches the close of their fiscal year on September 30th. The end of the fiscal year is always a busy time for the agency. Both examiners and administrative patent law judges (APJs) will be focusing on finalizing their production quotas for the year. Historically, workflow from the agency peaks in September.

This month, the Patent Trial & Appeal Board (PTAB) will accept its 2000th post-grant trial petition. As I pointed out previously, this two year volume of filings has already exceeded the previous 13 year history of inter partes reexamination. September and October filings are expected to reach 200 petitions per month.

aia statistics 082814

With increased hirings, the AIA trial section will become the largest section of the PTAB in October.

In addition to dealing with the rising workflow, this fall the PTAB will also…
Continue Reading Post-Grant Buzz – Fall 2014

AIA Trials Drive PTAB Growth to 235+ Judges

The Patent Public Advisory Committee (PPAC) held its quarterly meeting last week at USPTO headquarters in Alexandria Virginia. Updates from the USPTO included a report from the Patent Trial & Appeal Board (PTAB) on appeal and AIA trial proceedings. Much of the report was directed to the subject of the recent Federal Register Notice seeking comment on AIA trial proceedings, however, there were some updates of note.

The PTAB reports that come October the AIA Trial Section will be the largest section of the Board. To put this growth in perspective, the Board was comprised of 70 judges, total, in 2011. The AIA Trial Section is already at 85 judges, and growing. (Other sections of the Board include patent interferences, patent reexamination appeals, ex parte application appeals, and management). The Board is expecting to reach 235+ total judges by October. The boost of judges to the trial section is necessary to decide the growing influx of AIA challenges within the 12-month statutory mandate.

Of course, it wont be long before ex parte appellants, especially small/independent inventors, use this growth on the post-grant side as a rallying cry of unfairness.
Continue Reading PTAB Triples in Size Since 2011

Expired Patents May Follow Shorter Trial Schedule

Some months back, I pointed out how the post-grant challenges of the USPTO’s Patent Trial & Appeal Board (PTAB) now follow a (7) month schedule. Given the 12-month statutory mandate to conclude such post-grant proceedings, the (7) month schedule allows for a (5) month back end for the Board to draft and issue the written decision. This (7) month schedule is down from the more generous (9) month schedule employed in many 2012-13 filings.

For those challenging/defending expired patents, prepare for an even shorter schedule.
Continue Reading PTAB Accelerates Trial Schedule for Expired Patent

First PGR Petition Argues Patent is FITF Based on 112 Deficiency

Last week, the first petition for Post-Grant Review was filed with the Patent Trial & Appeal Board (PTAB) (PGR2014-00008). The petition targets U.S. Patent 8,684,420, which is directed to a craft kit for making linked bracelets out of colored elastic bands.The ‘420 patent, as well as related patents are asserted against the petitioner (LaRose Industries) as well as Toys-R-Us.

As a reminder a PGR petition may only be pursued for First Inventor to File (FITF) (i.e., those filed as applications on or after March 16, 2013). The continuation application underlying the ‘420 patent claims priority to earlier continuations and a provisional application that were filed before March, 16, 2013.  So, in order to pursue PGR of the ‘420 patent, the petitioner urges that the recently issued claims are not entitled to the priority of the earlier filings for lack of written support. The petitioner does not point to a claim element per se that it urges is unsupported, but instead, to an interpretation of the claim as lacking support. (petition here)

This argument may be an especially challenging sell given the proposed construction is arguably narrower than the Broadest Reaonable Intrepetation (BRI) that will be applied by the PTAB.
Continue Reading PTAB Receives First PGR Petition

Court Finds Clear & Convincing Invalidity Despite Previous USPTO Review

The USPTO applies the preponderance of the evidence standard in post-grant patent proceedings to assess patentability relative to applied prior art. For at least this reason, it is far easier to demonstrate unpatentability of a patent claim at the USPTO as compared to invalidity in the district court, which applies the clear and convincing evidentiary standard. As pointed out last week, art failing the lower threshold of the USPTO may even result in summary judgment of no invalidity in the district court. 

Applying the above logic then, it would seem imprudent to argue invalidity in the district court based upon art explicitly considered, and rejected by the USPTO in a post-grant proceeding. That is, unless you can convince the court that the earlier USPTO proceeding was incompetent.

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Continue Reading Court Unimpressed by PTO Review of Prior Art

Board Emphasizes DJ of Invalidity Prevents Later CBM Filing

The Patent Trial & Appeal Board (PTAB) issues three (3) types of opinions, routine, informative and precedential. The vast majority of PTAB decisions are routine, that is, decisions that are simply publicly available. These decisions may be cited for whatever persuasive value they may have but, as a general matter, routine opinions should be cited sparingly.

Informative decisions are those are not binding, but illustrate norms of Board decision-making for the public, the patent examining corps, and future Board panels. Informative opinions may explain best practices, address recurring problems, identify developing areas of the law, exemplify types of decisions under-represented in commercial case reporting services, or report cases of public interest. Going forward, most designations from the PTAB Trial Section are likely to fall into this category.

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Continue Reading PTAB Issues First Precedential Opinion of AIA Trials

Stretching Prior Art Grounds Fatal to Petitioners

 
In district court, 102 grounds are highly preferred to even the strongest 103 ground. This is because of the uphill battle in demonstrating invalidity in a forum that not only applies a presumption of patent validity, but also requires clear and convincing evidence of invalidity. Obviousness just does not resonate with non-technical fact finders as well as anticipation. For this reason, patent challengers in the district court will often creatively argue 102 grounds on the basis of “inherency.”
 
Now that patent validity disputes are increasingly heading to the Patent Trial & Appeal Board (PTAB), challengers find themselves in a difficult situation. That is, where a 102 ground has been “stretched” in the co-pending litigation, for consistency, the same position is being advanced at the PTAB. This practice has led to some unfortunate results for those allowing their district court case to drive their PTAB strategy.

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Continue Reading Petitioner Over-Reaching at the PTAB Results in Adverse Summary Judgment

Briefing to Review Federal Register Notice Concerns

The Patent Trial and Appeal Board (PTAB) is hosting a free lunchtime webinar tomorrow from noon to 1 pm(EST) to discuss AIA trial proceedings. At the webinar, Acting Vice Chief Judge Scott Boalick, who heads the Trial Section of the Board, will discuss non-rule recommendations received from stakeholders during…

Past Three Months of PTAB Statistics Tell A Different Story

Last week, I explained that the institution rate of PTAB trials in Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings had dropped, on average, by roughly 10 percentage points in the past year. However, the averaging of 2012-14 proceedings does not tell the current story. Whether you agree with my explanation of this recent phenomena as a reflection of poor petition quality or not, there is clearly a heightened focus on the preliminary proceeding (i.e., petition stage).

What was left out of last week’s post was a snap shot of what is actually going on at the PTAB  today— the effective institution rate right now.
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Continue Reading PTAB Institution Rate Dips Into 60% Range

2014 PTAB Institution Rate Retreats to 70% Range

To date, a major patentee criticism of Inter Partes Review (IPR) & Covered Business Method (CBM) patent challenges has been their high rate of institution. Patentees were quick to point to the 85+% institution rate of the Patent Trial & Appeal Board (PTAB) as evincing an anti-patent bias. This dull roar was then amplified by then CAFC Chief Judge Rader labeling the PTAB a patent “death squad.” In response, the PTAB patiently explained the relatively small sample size of instituted proceedings, the fact that trial does not always go forward on all claims, and that there was a natural selection of weak patents in the early days of IPR and CBM. The PTAB suggested that in the months ahead, the institution rate would normalize. Yet, these reassurances fell on mostly deaf ears.

Now that a larger sample size is available (and soon to be growing by 100+ decision every month), the PTAB predictions are beginning to materialize.
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Continue Reading PTAB Dials Back Petitioner Success Rate