New SOPs Demystify Internal Practices & Consolidate PTAB Policy Control to Director

The PTAB has substantially revised its Standard Operating Procedures (“SOPs”) regarding paneling of matters before the PTAB (SOP1) and precedential and informative decisions (SOP2).

SOP1 largely explains existing internal processes relating to assignment/reassignment of judges in the interests of increasing transparency, predictability, and reliability across the USPTO. More specifically, revised SOP1 explains the procedures for panel assignment and for informing parties regarding panel changes. It also explains the process for designating panels with more than three judges, and notes that such panels should be rare and will only occur with the approval of the Director.(here)

Revised SOP2 is likely to draw the most interests as it creates a Precedential Opinion Panel (POP) that effectively moves the previous PTAB precedent setting power away from the judges to the domain of the agency executives.  Continue Reading PTO Director to Drive PTAB Precedent Going Forward

Rebutting the Presumption of Unreasonability

Given the complications associated with amending litigated claims, amendment is still relatively rare at the Patent Trial & Appeal Board (PTAB).  Yet, there remain Patent Owners willing to amend claims in limited scenarios. For these Patent Owners, the Board has provided some helpful guidance post Aqua Products.  As a reminder, newly designated precedent Western Digital Corp. v. SPEX Techs., Inc has replaced now de-designated precedent/informative decisions of MasterImage 3D, Inc. v. RealD Inc.,Case IPR2015-00040 (PTAB July 15, 2015) (Paper 42) and Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027 (June 11, 2013) (Paper 26).

However, Aqua Products did not overrule all aspects of these earlier decisions despite their de-designations. So, the question remains as to the continued viability of some of these earlier positions — such as the standard for assessing a “reasonable number” of substitute claims.

In a decision issued today, the Board emphasized that adding claims beyond a 1-1 substitution creates a presumption of unreasonability.  And, that rebutting that presumption may not necessarily require a showing of patentable distinctness between multiple substitutes, as previously explained in Idle Free. Continue Reading PTAB Debates Standard for Reasonable Number of Substitute Claims

Claimed Ranges Overlapping with Prior Art Shift Burden of Production to Patent Owner

Since the Federal Circuit’s decision in Magnum Oil, the Patent Trial & Appeal Board (PTAB) has been mindful that the ultimate burden of persuasion must remain with the patent challenger. While this general rule guides most proceedings at the PTAB, as the Federal Circuit reminded the Board today, there are exceptions for the burden of production.

In E.I. Dupont De Nemours v. Synvina C.V. the Court considered whether a claimed range shown to be overlapping with that of the prior art creates a rebuttable presumption of obviousness. The Court reiterated that it did, and that once an overlap is shown by a Petitioner, it falls to the Patent Owner to come forward with appropriate rebuttal evidence. Continue Reading CAFC Explains PTAB Burden Shift for Claimed Ranges

“Without Prejudice” Dismissal of Earlier Complaint Does not Restart 315(b) Clock

As I predicted it would back in May, the Federal Circuit has now reversed the long-standing practice of the Patent Trial & Appeal Board (PTAB) to accept certain IPR petitions outside of the 1-year window of 35 U.S.C. § 315(b).  While 315(b) precludes petitions filed more than one year after service of a complaint of infringement for a subject patent, the Board had consistently held that where a first-filed complaint (outside the window) was dismissed without prejudice, that the one-year window would essentially reset.  In other words the PTAB adopted the legal principal that a voluntary dismissal of a complaint renders the earlier proceeding a nullity and leave the parties as if the action had never been brought.

In its en banc ruling today in Click-to-Call v. Ingenio (here), the Court reversed the Board’s longstanding practice. Continue Reading CAFC Reverses Long Standing PTAB Precedent on 1-Year Window

Patent Owner’s Given New Rights in Trial Practice Guide Update

The Federal Register will issue a notice updating the Patent Trial & Appeal Board (PTAB) Trial Practice Guide on Monday, August 13, 2018.  You can find a copy of this notice in the advanced reading room (here).  The update provides a number of changes to update the guide as to outdated material, but more importantly, provides significant, new benefits for Patent Owners. Continue Reading Patent Owners to Get Last Word at PTAB – Starting Now

CAFC Emphasizes Flexibility of its Printed Publication Jurisprudence

Last week, I pointed out that the Federal Circuit faulted the Patent Trial & Appeal Board (PTAB) for its narrow public accessibility analysis in Medtronic, Inc. v. Barry. Given the de novo review of printed publication status at the Federal Circuit, it is an issue that is frequently challenged on appeal.

Last Friday the Court took another opportunity to apply its multi-factor analysis to a printed publication dispute in GoPro Inc., v. Cointour IP Holdings, LLC.  In GoPro, the Court once again emphasized that focusing on a single factor (expertise of the audience) to the exclusion of others is reversible error. In reversing the Board’s decision in GoPro, the Court emphasized (here) that the reasonable diligence standard is applied to those skilled in the art. And that, proof of actual dissemination is not required, only that a person of skill could have located the publication with reasonable diligence.

In still another recent case, the Court explained that a commonly emphasized factor at the PTAB, indexing/searchability, is not a requirement to prove a printed publication publicly accessible. Continue Reading Publication Need not be Indexed/Searchable to be Prior Art

Public Accessibility: A Fact Intensive Inquiry

Yesterday I highlighted a significant decision for Patent Trial & Appeal Board (PTAB) practitioners pertaining to Real-Party-In-Interest (RPI) and privity determinations, Applications in Internet Time, LLC v. RPX Corporation. In Applications, the Federal Circuit faulted the Board for its narrow analysis of the facts, explaining that a more fact-intensive analysis was in order that takes into consideration the complete record. The Court’s rebuke of the PTAB’s RPI/Privy analyses reminded me of another significant Federal Circuit decision of the last few weeks that will recalibrate established PTAB practices.

In Medtronic, Inc. v. Barry the Court also faulted the Board for its narrow analysis of public accessibility. And, like its decision in Applications, directed the Board to perform a more fact intensive analysis of the entire record. Continue Reading Printed Publications & The PTAB

Previously Exercised Discretion Eliminated by SAS

While most remember the Cuozzo appeal as challenging the Patent Trial & Appeal Board’s (PTAB) claim construction practices, it also challenged the Board’s discretion to institute claims on grounds not presented in the IPR petition. But, the High Court deemed this issue unreachable given the appeal bar of 35 U.S.C. § 315(b). Still, the Federal Circuit has expressly endorsed the Board’s ability to modify the grounds presented in trial petitions.

Today, the Federal Circuit has made clear in Sirona Dental SystemsGMBH v. Institut Straumann AG (precedential) that the Supreme Court’s decision in SAS Institute eliminates any ability of the Board to modify a petitioner’s trial grounds. Continue Reading CAFC: PTAB Must Not Reformulate Petition Grounds

SAS No Help to Patent Owners

Since the Supreme Court’s decision in SAS Institute there has been much speculation over its practical impact on stakeholders. That is, does SAS favor petitioners or patent owners? I’ve participated in a number of CLE panels on this topic and have been shocked by those interpreting SAS as somehow beneficial to Patent Owners.

Make no mistake about it, SAS hurts Patent Owners…bigly. Continue Reading What Happens to PTAB Institution Rates Post-SAS?

Pending Cases to Revisit Pruned Claims/Grounds

Today the Patent Trial & Appeal Board (PTAB) issued guidance on the impact of SAS on AIA trial proceedings. The guidance explains that:

[F]or pending trials in which a panel has
instituted trial only on some of the challenges raised in the petition (as opposed to all challenges raised in the petition), the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition. … ¶ [F]or pending trials . . . the panel may take further action to manage the trial proceeding, including, for example, permitting additional time, briefing, discovery, and/or oral argument, depending on various circumstances and the stage of the proceeding.

You can find the full guidance (here)