Post-Grant Review

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Favorite Criticism of PTAB Proceedings Falls Flat

The Patent Trial & Appeal Board (PTAB) is currently seeking feedback from the public on the first two years of administrative patent trials of the America Invents Act (AIA). The very first issue presented for consideration in the recent Federal Register Notice is the continued use of the broadest reasonable claim interpretation (BRI) in PTAB post-grant patent challenge proceedings.

Since the passage of the America Invents Act (AIA) some patentees have been advancing the notion that BRI should not be employed by the PTAB. Instead, they argue that BRI claim construction should be replaced with the claim construction practices of the district court (i.e., Phillips v. AWH). Critics insist that the new AIA proceedings are more “adjudicative in nature” as compared to examiner based patent prosecution/reexamination practices, and, that PTAB post-grant patent practices should be consistent with the courts. Of course, the true concern at the heart of this “consistency” argument is that the Board is arriving at an unduly broad construction compared to that of the courts. That is, critics of PTAB claim construction practices believe a Phillips analysis to be inherently narrower than BRI. (i.e., more patent validity/patentability friendly).

This belief is mainly driven by cases where a patent claim previously construed by a court, is later construed to have a broader scope by the PTAB. The fault in this logic is two-fold. First, it is assumed that a Phillips analysis necessarily dictates a narrower construction, and, second, that the district court constructions were not unduly narrow in the first instance.
Continue Reading PTAB Finds BRI Claim Construction No Different Under Phillips

Federal Register Notice to Issue Tomorrow

As promised, even a bit early, the USPTO will issue a Request for Information in tomorrow’s Federal Register. The Notice, entitled,
Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board, will pose the following 17 questions:

Claim Construction…

Growth in PTAB Post-Grant Filings May Require Changes to Workflow

PTABThis time last year, the Patent Trial & Appeal Board (PTAB) had about 250 Inter Partes Review (IPR) and Covered Business Method (CBM) petitions pending. Only half that number were in the trial phase.

One year later, the PTAB has received 1500 IPR and CBM petitions, roughly half of which are now in trial phase. The surge in filings over the past two months has been especially pronounced, averaging 150 petitions per month. This is the new normal.

The chart below is from June 6, 2014. (Click to Enlarge)

aia_statistics_06_05_2014

As explained at the PTAB roadshow, the Trial Section of the PTAB consists of roughly 70 judges at present. (with plans to add another 52 by October). While the influx of judges will certainly help handle the growing workload, given the magnitude of trials that will soon be pending, the PTAB will need to adjust the daily workflow to maintain their 12 month trial mandate.
Continue Reading Inexperienced Attorneys Tax PTAB Resources

Article III Standing a Rare Concern at PTAB

Last week, the Court of Appeals of the Federal Circuit (CAFC) determined that public interest groups challenging patents at the USPTO must demonstrate Article III standing to appeal failed challenges to the Court. In Consumer Watchdog v. WARF, Consumer Watchdog  appealed  a determination of the Patent Trial & Appeal Board (PTAB) to uphold claims of WARF patent 7,029,913 directed to stem cell cultures (inter partes reexamination 95/000,154). (here). In dismissing the appeal, the Court explained that while Consumer Watchdog was provided a procedural right to appeal by the inter partes reexamination statutes, an “injury in fact” was necessary to confer Article III standing. That is, such appeals require “a particularized, concrete stake in the outcome of the reexamination.”  Consumer Watchdog’s status as an entity that does not compete with the patent owner was strongly emphasized in the decision. The court left “it to future panels to decide whether, under other circumstances, the preclusive effect of the estoppel provisions could constitute an injury in fact.”

While an interesting decision, such public interest challenges were exceedingly rare in inter partes patent reexamination (discontinued by the AIA in 2012). On the other hand, Inter Partes Review (IPR) has seen a fair amount of activity from such entities. For this reason, some have speculated that this decision may have a chilling effect on such filings going forward. However, since IPR challenges are not governed by reexamination procedural practices, such filings are likely to continue.…

Continue Reading IPR Joinder Limits Impact of WARF Decision

nautilus-112

Decision Indirectly Highlights Value of Post-Grant Challenges

Yesterday, the Supreme Court decided that the Federal Circuit’s “insolubly ambiguous” framework for analyzing indefiniteness was, well…. indefinite.  In Nautilus Inc. v Biosig Instruments, Inc., the court found that “. . .the expressions “insolubly ambiguous” and “amenable to construction” permeate the Federal Circuit’s recent decisions concerning § 112, ¶2’s requirement.  We agree with Nautilus and its amici that such terminology can leave courts and the patent bar at sea without a reliable compass” (here). In reversing the decision of the CAFC, the case was remanded with instructions to consider a re-calibrated standard. That is, whether the claims when read in light of the specification and prosecution history fail to inform, with reasonable certainty, the scope of the claims to one of skill in the relevant art. The new test, as discussed at length in the decision, emphasizes a more fact intensive analysis.

As pointed out in footnote 10 of the decision, the parties dispute over the proper weight to be accorded the underlying proofs (i.e., clear and convincing, or not), and the degree of deference to a previous post-grant determination of the USPTO, were left for another day—That day may be just around the corner.
Continue Reading Nautilus Decision to Drive PGR and CBM Filings

Patent Reform Has Been in the Hands of the Public Since September 2012

The last round of patent reform was enacted into law in 2011 as the America Invents Act (AIA). Along with the AIA came new patent challenge mechanisms that first became available to the public in September of 2012. These mechanisms have quickly increased in popularity and are only now disrupting the business of abusive patent litigation. For whatever reason, Congress has decided to forge ahead with new reform efforts despite the game changing impact of the AIA — an effort seemingly stalled at present. As Congress continues to debate the need for further patent reform, the impact of the AIA is becoming increasingly harder to ignore. That is, the public’s appetite for the low cost, post grant patent challenge proceedings of the AIA is surging, and the efficacy of these proceedings on assertion entities is impressive.

Since their initial availability in September of 2012,…
Continue Reading PTAB Popularity Undermines Push for Further Patent Reform

Pre-Issuance vs. Post Issuance…PTAB Does Both

Yesterday, the CAFC explored the proper standard for a USPTO indefiniteness analysis in In re Packard (here). Given that the Supreme Court has taken up the other side of this debate in Nautilus v, Biosig Instruments Inc., namely, the proper standard for a district court indefiniteness analysis, the Court’s holding was very delicately crafted. In affirming the USPTO’s rejection under 35 U.S.C. § 112(b) the Court found the examiner showing under 112 (which is based on a requirement of clarity in claim drafting) demanded a persuasive rebuttal from the patentee. In the eyes of the Court, the patentee failed to meet the rebuttal burden, so the indefiniteness rejection was affirmed.

The concurring opinion went a step further and found that the USPTO standard of “clarity” was an even lower threshold than that debated in Nautilus. (i.e., “insolubly ambiguous” test vs. adopting an interpretation that comports with the understanding of one of skill in the art). This lowermost standard was endorsed by the concurring opinion in deference to the expert agency and their role in protecting the public notice function of patents.

Packard presents a clear distinction between the “pre-issuance” role of the USPTO relative to the “post-issuance” role of the courts. However, the vast majority of appeals headed to the CAFC in the years ahead will be post-issuance patent challenges lodged with the USPTO. What does In re Packard mean for post-grant patent practice at the Patent Trial & Appeal Board (PTAB)?…

Continue Reading CAFC Sends Conflicting Messages to PTAB on Indefiniteness Standard

PTAB Post Grant Patent Challenges to Help Demonstrate “Exceptional” Cases

Last week’s Supreme Court decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc. broadened the “exceptional case” rubric used to determine when an award of attorney fees is appropriate in a district court patent dispute. On the same day, in Highmark Inc. v. Allcare Health Mgmt. Sys., the Court re-calibrated the level of deference the CAFC must accord to such determinations on appeal. It remains unclear if improving the odds of securing fees in a legal sense will translate to practical impact for patent litigants. That is, given the historic disinclination of district court judges to award fees, especially in certain plaintiff friendly jurisdictions, whether these decisions will really advance the needle for accused infringers. What is certain, however, is that accused infringers will be far more active in seeking such relief going forward, and may seek to creatively leverage PTAB patent challenge proceedings to support their case.

Can an ongoing PTAB proceeding help distinguish an “exceptional” case?
Continue Reading Supreme Court Injects Octane to Further Fuel PTAB Demand