Post-Grant Review

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Privilege Expanded to Cover Communications with Foreign Agents

Tomorrow’s Federal Register will include a NPRM to amend the rules of practice before the Patent Trial and Appeal Board (PTAB). The proposed rule recognizes that, in connection with discovery conducted in certain proceedings at the United States Patent and Trademark Office, communications between U.S. patent agents or foreign patent practitioners and their clients are privileged to the same extent as communications between clients and U.S. attorneys. (advanced copy here)

The rule would apply to Inter Partes Review (IPR), Post-Grant Review (PGR), the transitional program for Covered Business Method (CBM) patents, and derivation proceedings. This rule would clarify the protection afforded to such communications, which is currently not addressed in the rules governing Board proceedings at the USPTO.

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Continue Reading PTAB to Adjust Attorney Client Privilege Rule

Preliminary Responses Accompanied by Declaration Evidence: Early Results 

Back on May 1st, the Patent Trial & Appeal Board (PTAB) began to accept new testimonial evidence with patentee preliminary responses.  The PTAB implemented this change to address complaints that patentees were disadvantaged by previous rules precluding such evidence from accompanying a preliminary response to the petition. It was argued that the previous rules were especially imbalanced as almost all petitions were accompanied by petitioner declaration evidence.  I had my doubts.

Now that we are some 5 months removed from the rule modification, early results are in.  

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Continue Reading New PTAB Evidence Option Not Moving the Needle So Far

Fee Setting Authority to be Exercised for FY 2017 

The USPTO discussed its first ever fee increase under the fee setting authority of the America Invents Act (AIA) in November of 2015.  At the time, an initial proposal was provided to the Public Patent Advisory Committee (PPAC) for review.  While the initial hope was to have the proposed fee adjustments take effect on October 1st (start of FY 2017), significant stakeholder feedback and considerations have, understandably, slowed the rule making process.  At long last, the Notice of Proposed Rule Making (NPRM) issued today.  Since a Final Rule Notice must follow the NPRM, the proposed fee adjustments will not go into effect until calendar year 2017.

Notable Patent Trial & Appeal Board (PTAB) fee increases include:

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Continue Reading PTAB Trial Fees Slated for Significant Increase in 2017

315(e) Estoppel as an Affirmative Defense

As most are aware, completed AIA trial proceedings have estoppel consequences for failed petitioners.  For example, an unsuccessful Inter Partes Review (IPR) petitioner of a given patent claim, real party in interest, or privy of the petitioner, is estopped from asserting that the same claim is invalid in a civil or ITC action on any ground that the petitioner raised or reasonably could have raised during the failed IPR. (35 U.S.C. § 315 (e)(2)). The same estoppel applies to requesting or maintaining a proceeding before the USPTO with respect to such a claim (35 U.S.C. § 315(e)(2)).  As can be appreciated from this statutory framework, whether before the courts or the Patent Trial & Appeal Board (PTAB), Congress was clearly interested in preventing patent challengers from getting the proverbial second bite at the apple.

Occasionally, however, a petitioner will uncover new prior art that could not have reasonably have been raised in the earlier PTAB proceeding  Petitioners seeking to overcome the affirmative defense of statutory estoppel may find that the courts are far more receptive in this regard than the PTAB.
Continue Reading Forum Selection & PTAB Estoppel Burden

Amendment Practice to Remain Unpopular Regardless of In Re Aqua Products Outcome

Last Friday the Federal Circuit agreed to rehear In re Aqua Products Inc. The en banc rehearing will consider amendment practices of the Patent Trial & Appeal Board (PTAB) in AIA trial proceedings. Specifically, the Court will explore where the burdens of persuasion and production properly lie for motions to amend. To date the Court has repeatedly found the burden of persuasion to rest with the patentee for motions to amend.

While it appears likely that the Court will shift burdens away from patentees seeking amended claims before the PTAB, practically speaking, such an outcome is unlikely to make much of a difference. At the end of the day, amendments will always remain highly unattractive for patentees at the PTAB.
Continue Reading CAFC En Banc Review Unlikely to Spur PTAB Amendments

RPI Determination Under 315(b) Focuses on Litigation Control

In determining whether a party is a real party-in-interest subject to the one-year statutory bar of 35 U.S.C. § 315(b), the focus of the Patent Trial & Appeal Board (PTAB) to date has been honing in on the exercise of control over the earlier filed patent infringement lawsuit. The PTAB recently considered whether control of the allegedly infringing activity is enough to transform a party not named in the original complaint to an RPI for 315(b) purposes in Department of Justice v. IRIS Corporation Berhad, Case IPR2016-00497, slip op. at 7-9 (PTAB Jul. 25, 2016) (Paper 7).
Continue Reading Intervenor Activities & PTAB RPI Determinations

Anti-Competitive IPR Settlements for Orange Book Patents?

The Patent Trial & Appeal Board (PTAB) has the power to terminate an Inter Partes Review (IPR), Post Grant Review (PGR), or Transitional Proceeding for Covered Business Method Patents (CBM) upon request of the parties. As provided in 35 U.S.C. 317 (b), such settlement agreements must be in writing, and submitted to the agency before the proceeding can be terminated.  These submissions may be, at party request, maintained as business confidential— not surprisingly, almost all are submitted under seal.  The statute explains that the the confidential nature of these settlements will be generally maintained, but “shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause.”

The rationale behind making these agreements available to government agencies in particular is to safeguard the public from ant-competitive practices. Some commentators have begun to question whether or not “reverse payment” settlements are being made to terminate PTAB trial proceedings involving Orange Book patents.

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Continue Reading Reverse Payment PTAB Settlements in Bio/Pharma?

CAFC Clarifies Burden of Production in AIA Trial Proceedings

In patent examination, once a prima facie case of obviousness is presented in a rejection by the agency, the burden of production switches to the Applicant. In AIA trials, such as Inter Partes Review (IPR) there are no “rejections,” instead, there are “grounds” of unpatentability. These grounds are first presented in a petition, and if satisfying the reasonable likelihood of prevailing standard, instituted for trial by the Patent Trial & Appeal Board (PTAB).  However, institution of a trial ground by the agency is not the same as establishing a prima facie case. 

As the Federal Circuit held yesterday in In re Magnum Oil Tools Int’l, Ltd. the burden of production does not shift to the patentee upon trial institution.
Continue Reading PTAB Institution is Not Akin to Rejection in Patent Examination

Much Maligned PRPS to Phase Out Shortly

In the rush to develop an e-filing system in the months ahead of September 16, 2012, the USPTO deployed a serviceable e-filing system for AIA trial proceedings known as the Patent Review Processing System (PRPS).  While understandable given the time constraints to pull it together, PRPS was a bare bones system that left much to be desired.  Since then, PRPS has done its job, but, the agency has been developing a new, and improved system.  Halleluljah!

That new system is called Patent Trial and Appeal Board End to End (PTAB E2E).  PTAB E2E uses a web browser…
Continue Reading PTAB To Debut New E-Filing System July 9th

High Court Upholds BRI & Appeal Bar for AIA Trial Proceedings

In Cuozzo Speed Technologies, LLC v. Lee, the Supreme Court  unanimously upheld the use of the broadest reasonable interpretation (BRI) of patent claims in AIA trial proceedings, and, upheld (6-2)  the appeal bar for AIA trial institution decisions.  While many simply assumed that the High Court would not have granted certiorari absent an interest in reversing the Federal Circuit, my take all along was that this was just a “kick of the tires” on a BRI issue the Court had not had occasion to address previously.  As I, and the rest of the patent world, have beaten the BRI topic to death, let’s move onto the second issue as this one is more than a bit murky going forward.  

To my eyes, the second issue was less predictable.  That is, did the appeal bar of 35 U.S.C. § 314(d) bar all appeals, or just interlocutory appeals of institution decisions? The High Court upheld the appeal bar, but in the process may have called into question the reviewability of a patent’s CBM eligibility as held by the Federal Circuit in Versata Development Group v. SAP America, Inc.

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Continue Reading Did Cuozzo Unravel Versata CBM Reviewability?