At yesterday’s Patent Public Advisory Committee (PPAC) meeting, USPTO Assistant Deputy Commissioner for Patent Operations Jack Harvey explained a new pilot program to be launched in the spring of 2016. The Pilot seeks to establish a “bridge between the Patent Trial &
In Prolitec, Inc., v. Scentair Technologies, Inc. the Court of Appeals for the Federal Circuit (CAFC) confirmed that patentees bear the burden of demonstrating patentability for amended claims in AIA trial proceedings before the USPTO Patent Trial & Appeal Board (PTAB). Prolitec also found that this burden encompassed both the art of record in the AIA trial proceeding as well as the original patent prosecution history.
Continue Reading CAFC Again Emphasizes Patentee Burden for PTAB Amendment
Earlier this month the Supreme Court granted certiorari in Cuozzo Speed v. Lee. The Cuozzo appeal involves the very first Inter Partes Review (IPR) ever filed with the USPTO’s Patent Trial & Appeal Board (PTAB). Throughout the IPR and CAFC appeals, patentee Cuozzo has maintained that the broadest reasonable claim interpretation (BRI) employed by the PTAB is improper, and that the PTAB’s decision to institute trial should be reviewable on appeal. The Federal Circuit disagreed on both issues, but sitting en banc was sharply divided.
In its petition for certiorari Cuozzo presented two issues for review to the Supreme Court, now accepted:
1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.
The grant of certiorari in many Federal Circuit cases has led to reversal. As such, many are viewing the high court’s interest in Cuozzo as an indication that the use of BRI in PTAB proceedings will be short-lived. Unlikely.
Continue Reading What Does High Court’s Review of Cuozzo Mean for PTAB?
When instituting an Inter Partes Review (IPR)—or any AIA trial proceeding for that matter— a panel of three administrative patent judges finds that the petitioner has made the threshold showing necessary for trial to proceed. Later, these same three judges will assess all evidence presented during the trial to determine whether or not any claims of the subject patent should ultimately be cancelled as unpatentable. Some patentees consider the use of the same judges from start to finish to be unfair. That is, there is a belief that use of the same judges brings with it a bias in favor of following through on the initial determination.
Continue Reading CAFC Endorses Use of Same PTAB Judges Throughout AIA Trials
During last week’s, blog webinar I recounted some of the more noteworthy Patent Trial & Appeal Board (PTAB) decisions of 2015. My focus was not on interesting cases in an academic sense, but instead, on cases that were impacting PTAB practice today.
These cases included clarification of various AIA estoppel provisions, the final word on issue joinder, clarification of the Idle Free amendment requirements, and a decision that was a game changer for AIA petition practice.
Continue Reading TOP 5 PTAB Decisions of 2015
The efficacy of objective evidence of non-obviousness (i.e., secondary indicia) hinges on the ability to demonstrate a “nexus” between the evidence and the subject patent claims. This is because such evidence cannot be accorded substantial weight absent a nexus to the claimed invention. As pointed out in a previous post a compelling showing of nexus is more likely in the unpredictable arts where specific formulations, dosages and the like are more readily correlated to such secondary indicia as commercial success and long-felt but unsolved needs.
Recently, in Merck & Cie v.Gnosis S.p.A., (here) the Federal Circuit affirmed the Patent Trial & Appeal Board’s (PTAB) nexus analysis in an unpredictable art. In Merck, the Court agreed that patentee’s secondary indicia lacked a nexus to the claims of U.S. patent 6,011,040 (methods of using folates to decrease levels of homocysteine) and, in the process, outlined some of the more common deficiencies in such evidence— illustrating the difficulties in presenting a nexus even in specific formulation claims.
Continue Reading CAFC Sides with PTAB’s Rejection of Secondary Indicia Nexus
When discussing Patent Trial & Appeal Board (PTAB) trial practice, the topics of supplemental information and supplemental evidence are often confused. Supplemental evidence may be filed as a matter of right within 10 days of a party objection. 37 C.F.R. § 42.64(b)(2). On the other hand, supplemental information is considered only upon motion of a party. Typically, supplemental information is filed by a petitioner within one month of trial institution to proactively reinforce an active trial ground. (e.g., information not previously available, recently produced in litigation, etc). 37 C.F.R. § 42.123
The patentee criticism was that the Rule permitted a petitioner to file supplemental information as long as it was filed within one month of institution— and relevant to a claim under review. Indeed, patentees in some early IPRs declined to file a preliminary response for fear that it would be used as a roadmap by the petitioner to fashion its supplemental information filing.
Continue Reading PTAB Supplemental Information Not a Sand Bagging Tool
Patentees often amplify relatively insignificant technical differences between a patent claim and the prior art in district court to great success. Such strategies often fall flat in front of the USPTO where the technical expertise of the agency can expose such distinctions as inconsequential (inherent), or obvious — usually.
For example, in patent reexamination, examiners adopt and/or modify challenges to suit their technical understanding. Later, on appeal, judges of the Patent Trial & Appeal Board (PTAB) may issue new rejections where a trivial patent claim difference is known, or suggested by the art as obvious. More recently, however, the same PTAB judges reviewing AIA trial petitions often times take a hyper-technical view of proposed grounds of unpatentability. That is, judges of the trial section often feel constrained to the grounds presented in a petition even though an argued “distinction” over the proposed grounds is a well-known, trivial feature in the art.
Today, the Federal Circuit reiterated that the PTAB is not so constrained in dealing with AIA trial petitions.
Continue Reading CAFC Finds PTAB Has Discretion to Augment Trial Grounds
Yesterday marked the close of the public comment period for both the Comments on a Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions in Post Grant Administrative Reviews as well as Comments to the Amendments to the Rules of Practice for Trials Before
The Patent Trial & Appeal Board (PTAB) assesses the content of a patent challenger’s petition (in view of any patentee preliminary response) to determine whether or not to institute an AIA trial proceeding. If trial is instituted, the Patentee may submit a Patentee Response together with any supporting testimonial evidence. In most cases, the Patentee Response is the last Patentee response on the merits. Thereafter, the Petitioner, which has the burden of demonstrating unpatentability, is given the last substantive filing via its Petitioner Reply. A few months later, the oral hearing marks the conclusion of the formal trial schedule.
Continue Reading CAFC Endorses Due Process of PTAB Trial Mechanics