Best Practices for Presenting Prior Art

Join the PTAB for the final Boardside Chat webinar of 2017 today, Dec. 7 from noon-1 p.m. ET. The chat will discuss “Best Practices for Presenting Prior Art References and Proving a Document is a Printed Publication.”

PTAB Judges Lora Green and Brian McNamara will present and address audience questions. This topic is relevant to both ex parte appeal and AIA trial proceedings. The webinar is free and open to everyone. (view here)

Long Delayed Fee Increase Hits January 16th

Section 10 of the Leahy‐Smith America Invents Act (AIA) authorizes the United States Patent and Trademark Office (USPTO) to, in part, “set or adjust by rule any fee established, authorized, or charged” under Title 35 of the United States Code. At the close of 2016, a Notice of Proposed Rule Making (NPRM) issued requesting comments from the public on proposed fee increases for post-grant patent proceedings, including AIA trials. A Final Rule Notice issued today setting significant increases to take effect on January 16th 2018 for AIA Trial Proceedings. Continue Reading PTAB Trial Fees Set to Increase in January

Article III Standing Only Necessary for Party Invoking Authority of Federal Courts

Last week, I analyzed the government’s arguments supporting Article III standing for intervenors in Knowles Electronics v. Matal. In that case, the panel questioned whether the government had Article III standing to intervene in a case where the original appellee dropped out. As to the arguments presented by the government, I explained that I found the most compelling argument to be that the agency can piggyback off of the Article III standing of the appellant as the standing inquiry is properly directed at those who invoke the court’s jurisdiction.

Yesterday, two of the three judges (Newman, Clevenger) on the Knowles panel agreed with the above “piggyback” argument in Personal Audio, LLC v. Electronic Frontier Foundation.
While Personal Audio did not address the specific intervenor scenario of Knowles, it did address standing of a party other than the Appellant.

The Appellee, Electronic Frontier Foundation (EFF) , is a non-profit organization that seeks to protect the public interest of consumers of digital technology.  EFF sought Inter Partes Review (IPR) of Personal Audio’s (8,112,504) ‘504 patent after a well-publicized campaign in which the ‘504 patent was used to target podcasting programs around the country. EFF was successful in securing the cancellation of the challenged patent claims at the Patent Trial & Appeal Board (PTAB).  On appeal, the question of EFF’s standing as appellee was raised by the panel, and additional briefing was ordered (including amicus filings).

In a few short paragraphs, the Court dispensed the EFF standing issue (here), concluding:

Here, the party invoking judicial review is Personal Audio; it is apparent that Personal Audio, on cancellation of its patent claims by the PTAB, has experienced an alteration of “tangible legal rights . . . that is sufficiently ‘distinct and palpable’ to confer standing under Article III.” Virginia v. Hicks, 539 U.S. 113, 121 (2003) (internal citations omitted). With Article III satisfied as to the appellant, EFF is not constitutionally excluded from appearing in court to defend the PTAB decision in its favor.

Personal Audio appears to have all but mooted the remaining briefing in Knowles on intervenor standing.

Moving Forward on Indefinite Claims Could Haunt Petitioners

Often times when preparing an Inter Partes Review (IPR) petition, a claim is encountered that may be of an indeterminate scope under 35 U.S.C. 112. As indefiniteness issues are not considered in IPR, the question then becomes: Should the broadest of the possible competing construction for the claim term be proposed in order to get an IPR instituted on the claim? Or, should the petitioner avoid proposing a construction for an indefinite term to reserve rights for a later, district court challenge?  Of course, holding back claims for a later district court proceeding is typically disfavored given the entire point of IPR, in most cases, is to avoid the expense of district court litigation.  For that reason, most petitioners forge ahead to attack the indefinite claim.

As explained by the Federal Circuit this week in Sonix Technology Co., Ltd. V. Pubs. Int’l Ltd. et al., (here), Petitioners would be wise to note the 112 issue in their petitions.

As I discussed a few months back, fact finding during AIA trial proceedings is sometimes found persuasive in later district court proceedings.  This is despite the fact that the Patent Trial & Appeal Board (PTAB) applies the broadest reasonable interpretation (BRI) standard of claim construction as opposed to the Philips construction of the district court. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2145 (2016).  In some cases, the courts find the technical insight of the expert agency to be especially compelling. Getting back to the decision in Sonix, the CAFC relied on how the term “visually negligible” was understood during two preceding patent reexaminations in overturning the district court’s grant of summary judgment of invalidity due to indefiniteness. 

The patent at issue covered systems and methods for using a visually-negligible graphical indicator to encode information in applications such as book covers, replacing traditional indicators such as a bar code.  The patent was challenged in an ex parte reexamination in 2010 by an alleged infringer, and the patentability of the pending claims (and new claims) was confirmed.  The challenger filed a second reexamination soon after, particularly focused on prior art allegedly teaching visually-negligible graphical indicators.  Again, the patentability of the challenged claims was confirmed.  

In 2013, Sonix filed suit against a group of alleged infringers, and late in the case, based on the apparent realization that “visually negligible” could be considered a subjective term based on conflicting expert testimony, the defendants amended their invalidity contentions to newly-assert that “visually negligible” was indefinite, moving for summary judgment of indefiniteness.

In reversing the district court’s grant of summary judgment, the Court explained that, in addition to the written description, the post grant prosecution history also made reversal “compelling,” noting that “[n]o one involved in either the first or the second reexamination had any apparent difficulty in determining the scope of ‘visually negligible.’”  Of course, much like IPR, patent reexamination precludes challenges based on indefiniteness, and examiners may not issue 112 rejections for original claim language.

The Court emphasized that during the first reexamination, the challenger “repeatedly argued that the prior art disclosed visually-negligible graphical indicators without any apparent uncertainty as to the meaning or scope of the term” and had no difficulty applying it to the references of record, and that during the second reexamination, the examiner “was able to understand and apply the term in performing a search for prior art and make an initial rejection.”  (Note: reexamination typically does not entail searching as rejections are proposed in the request) The Court also noted that during the second reexamination the expert was able to understand this term sufficiently so as to differentiate between indicators which were (and were not) visually negligible, and the examiner was able to understand these opinions and differentiate between the indicators as well, resulting in withdrawing the rejection.

Although this case suggests that post-grant proceedings can be persuasive evidence regarding claim interpretation in district court proceedings, the Court was careful to note the limitations of its decision:

Our holding in this case does not mean that the existence of examples in the written description will always render a claim definite, or that listing requirements always provide sufficient certainty. Neither does the fact that an expert has applied a contested claim term without difficulty render a claim immune from an indefiniteness challenge. As always, whether a claim is indefinite must be judged “in light of the specification and prosecution history” of the patent in which it appears. Interval Licensing, 766 F.3d at 1369. We simply hold that “visually negligible” is not a purely subjective term and that, on this record, the written description and prosecution history provide sufficient support to inform with reasonable certainty those skilled in the art of the scope of the invention. The examiner’s knowing allowance of claims based on the term that is now questioned, plus the acceptance of the term by both parties’ experts, force us to the conclusion that the term “visually negligible” is not indefinite. Accordingly, we reverse the district court’s conclusion that the asserted claims are invalid as indefinite.

(emphasis added)

Although not a basis for the Sonix decision, keep in mind that the CAFC applied the Nautilus standard for indefiniteness rather than the stricter standard of the PTO. Nautilus is not as unforgiving as the analysis of the PTO (as pronounced in Ex parte Miyazaki and, more recently In re Packard (CAFC 2014). Given the PTO has a greater opportunity under Packard to reject terms under 112, this fact may also be raised to bolster PTO findings in similar fact patterns going forward. For this reason, troublesome terms are best noted in IPR petitions along with an explanation as to why 112 is not/cannot be raised. 

PTAB Specific Webinars Offered by USPTO

The full slate of 2017 Boardside Chat webinars have been announced for 2017. The BoardSide Chat series is a bi-monthly webinar that is free to the public. As with past webinars, the Board will share updates on topics related to ex parte appeals and AIA trials. There will be time during each webinar for audience questions and feedback.

Please see the schedule below:

January 10, 2017 – Best Practices for Presenting Prior Art in an AIA Trial
March 7, 2017 – Best Practices for Proving a Document is a Printed Publication in an Appeal or AIA Trial
May 2, 2017 – Motions to Seal, Protective Orders, and Confidential Information in AIA Trials
July 11, 2017 – PTAB E2E: Latest Modifications in an Agile Development World
September 12, 2017 – European Oppositions v. AIA Trials: Similarities and Differences
November 7, 2017 – Objections to Evidence in an AIA Trial: How and When to Make and Moving to Exclude

All webinars are noon – 1PM (EST)  (Bookmark this page)

The link to each webinar is found (here)

994 747 278
Call-In #
(650) 479-3208

PTAB Trial Not Necessarily Constrained to Petition Grounds

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.  

Previously, in In re Cuozzo, the CAFC did not disturb the PTAB’s decision to institute trial on more claims than challenged in a petition. In today’s decision, the Court found that the PTAB is also not limited by proposed prior art grounds.

In Sightsound Technologies LLC v. Apple Inc. the Court explained (here):

SightSound argues that the Board erred in considering obviousness because Apple failed to include such argument in its petitions. As in Cuozzo, the statute does not limit the Board’s authority at the final decision stage to grounds alleged in the CBM petitions. The reasoning of Cuozzo and Achates applies not only to § 314(d), involved in Cuozzo and Achates applies not only to § 314(d), involved in Cuozzo and Achates, but also to § 324(e), the identical provision applicable to CBM review. 

In addressing the patentees due process complaints concerning the lack of obviousness grounds in the petition, the Court explained in a footnote:

We see no merit in SightSound’s contention that the Board’s approach deprived it of due process, particularly in light of the Board’s care in giving SightSound multiple opportunities to comment on the obviousness issue beyond what was required.

While patentees may lament this decision as yet another “anti-patent” anecdote, the agency owes a duty to the public to correct its mistakes. That is not to say that the PTAB owes it to the public to rewrite every faulty petition filed, not at all. Just that, in this case, the distinction over the anticipation ground was that the reference did not show data being stored to a hard disk. Arguing such a decades-old feature as patentably distinguishing to an expert agency should never fly.

Heightened Written Description Requirement for Negative Claim Limitations?

Negative patent claim limitations were once disfavored by the USPTO.  This is because defining claim scope by exclusion was considered less precise relative to more traditional, positive claim scope recitations.  Over the years, the USPTO has been guided to accept negative limitations as in some cases it may be the only way to adequately claim a given invention.  Yet, in assessing written description support for such claim features, the USPTO explains that “the mere absence of a positive recitation in a patent specification is not a basis for exclusion consistent with written description requirements.” MPEP 2173.05(i) 

In some cases, examiners have been known to require explicit support for a negative claim limitation. The degree of specification support necessary to support a negative claim limitation was analyzed last week by the Federal Circuit.

Inphi Corporation (“Inphi”) filed a request for inter partes reexamination of Netlist, Inc.’s (“Netlist”) U.S. Patent No. 7,532,537 (“the ‘537 patent”) directed to computer system memory modules comprising memory chips.  Numerous claims were rejected as obvious.  In overcoming the rejection, Netlist amended its claims, narrowing them and adding a negative limitation.  The negative claim limitation excluded three particular types of memory chip selection signals. 

Inphi appealed to the Board arguing in pertinent part that Netlist’s negative claim limitation failed to satisfy the written description requirement.  The Board affirmed the Examiner’s final decision and denied Inphi’s subsequent request for rehearing.

The question posed to the CAFC was whether Netlist’s negative claim limitation was supported by the specification or constituted impermissible new matter. That is, whether or not the disclosure of alternative implementations was enough, or whether a particular advantage disadvantage of one option to the exclusion of another, was required. 

The CAFC affirmed the Board, holding that simply describing alternative features without articulating advantages or disadvantages of each feature can support a negative limitation. (here)

The parties’ dispute centered on interpreting the key language in Santarus, Inc. v. Par Pharm, Inc.:

Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.  Such written description support need not rise to the level of disclaimer.  In fact, it is possible for the patentee to support both the inclusion and exclusion of the same material.

694 F.3d 1344, 1351 (Fed. Cir. 2012).  Inphi argued that the specification in Santarus clearly differentiated between an advantageous option and a disadvantageous alternative, and this was necessary to support a negative limitation directed to the disadvantageous alternative.  The ‘537 patent lacked such clear differentiation, but the Board pointed to three parts of the specification where the chip signaling alternatives were distinguished:  in a standards publication for memory devices that was incorporated by reference, in a table where these three types of chips were listed separately, and in a figure where these three types of chips were displayed on different signal lines.  The Court held that this constituted substantial evidence supporting the Board’s finding, emphasizing that “Santarus did not create a heightened written description standard for negative claim limitations and that properly described, alternative features are sufficient to satisfy the written description standard of § 112, paragraph 1 for negative claim limitations.”

USPTO Releases Petition Timelines

The Office of Petitions has launched a new USPTO Patents Petitions Timeline that provides information on petition types that can be filed throughout each stage of the patent prosecution, and reexamination process. For each petition type, users can easily access information on average pendency over the past 12 months of decided petitions, the deciding office, petition grant rates, and link to specific sections of the Manual of Patent Examining Procedure (MPEP) or other parts of the USPTO website that relate to each petition type. (here)

Given the pro forma nature of many prosecution related petitions, of most interest are the more unusual filings, such as petitions to revive abandoned applications.

Of perhaps the greatest interest is the pendency information pertaining to petitions filed during patent reexamination. I have often referred to this practice as the “black arts” as such practice is fraught with uncertainty, and pendency can be quite significant.
The statistics for both ex parte patent reexamination and inter partes patent reexamination are provided below.  While the pendencies are significant for Rule 181-183 filings, keep in mind that since inter partes reexamination requests are no longer accepted. Inter Partes petition workflow (which has always been very significant) should be slowing down. Going forward, I would expect reexamination petitions under Rules 181-183 to improve in timeliness. 

Reexamination Related Petitions

CRU – Central Re-Examination Unit
OPLA – Office of Patent Legal Administration

Petition Type

Avg. Days Pending of Decided Petitions

Grant Rate Percentage

Deciding Office

Extension of time in Ex Parte reexamination under 37 CFR 1.550

        1 88% CRU
Extension of time in Inter Partes reexamination under 37 CFR 1.956

        2 100% CRU
To expunge under 1.59

       77 27% CRU
To review denial in Ex Parte reexamination under 1.515

       66 4% CRU
To the Director under 1.181

      150 38% CRU
Under 1.182

      151 16% CRU
For suspension of the rules under 1.183       78 66% CRU

Functional Aspect of Structural Term Overlooked

Yesterday, in Power Integrations, Inc., v. Lee (CAFC 2015) the Court considered the rejection of claims 1, and 17-19 of  U.S Patent 6,249,876. Reexamination of the ‘876 patent was initiated by the USPTO in 2006 at the request of Fairchild Semiconductor. At issue in the reexamination (and in a parallel infringement action) was the meaning of the claim terminology  “coupled to.” The Patentee insisted that this terminology had both a functional and structural meaning. On appeal to the Board of Patent Appeals and Interferences (BPAI — Now the PTAB), affirmed the examiner’s rejection of the claims. In doing so, the Board appeared to focus only on the structural aspect of the disputed claim terminology.

The CAFC reversed and remanded finding that the Board’s focus on the structural aspects of the disputed claim terminology to be “red herring.”  
The Board stated that Patentee “appear[ed] to argue that one of ordinary skill in the art would understand the term ‘coupled to’ to restrict device connections to exclude intervening components.”  The Board concluded, however, that the term meant simply to “join[] devices into a single circuit,” and did not preclude the presence of intervening components.  In addition, the Board rejected Patente’s argument “that the respective counters in [the cited art] are not coupled to the respective digital to analog converters because all [have intervening components]  Patentee requested the Board’s reconsideration prior to appeal to the CAFC. Patentee asserted the Board misapprehended their argument regarding their construction of “coupled to” explaining that it had never contended that the term precluded the presence of intermediate circuit elements between the counter and the digital to analog converter.  The Board denied rehearing and dismissed Patentee’s argument

The CAFC noted that Patentee had consistently argued before every tribunal that claim 1, when read in light of the specification and surrounding claim language, requires that the counter itself – not an intervening element – control the digital to analog converter’s output to vary the switching frequency. The Court described the Board’s structural focus to be a red herring, and opined that it failed to adequately evaluate Patentee’s  primary argument (i.e., the aforementioned control aspect).

The Court reminded the Board that while the district court claim construction was not binding on it, full consideration of the earlier construction may have proved enlightening. That is, the Court felt “the board had an obligation, in these circumstances, to evaluate that [district court] construction and determine whether it was consistent with the broadest reasonable construction of the term.” However, the court expressly noted they were not creating a new requirement that the Board must in all cases assess a previous judicial interpretation of a disputed claim term. Rather, the court remanded the case so that the Board may fully assess the functional aspect of the claim and set forth its “reasoning in sufficient detail to permit meaningful appellate review.”

How Patentee will fare on remand remains to be seen. The Court mentions that the Solicitor briefing provided an alternative explanation to affirm that the Board may simply adopt on remand. 

While it is one thing to say that the Board did not fully address the functional issue, “coupled to” would not seem to denote exclusive control on its own. Also, had the litigation construction not been before the Court in 2013, it is not clear that the Court would have faulted the Board’s analysis. The takeaway here is to clearly present all arguments to the Board.

Misguided STRONG Act Would Undo Years of AIA Progress

Well, if you expected the Goodlatte Bill to sail through the House for swift passage through the Senate, forget about it. Hill chatter has indicated that the significant House support of the Bill has diminished since the last vote in 2013 (and rightfully so given the events of the past year). Perhaps of greater threat to the patent reform effort , however, is yesterday’s introduction of the “STRONG Act” on the Senate side (here), which makes clear that further patent reform is far from guaranteed for 2015. 

The STRONG Act, or “Support Technology and Research for Our Nation’s Growth Patents Act of 2015” removes the controversial fee shifting provision of the Goodlatte Bill (a key point of contention in past battles). More importantly, the Senate Bill adds a multitude of proposed changes to AIA trial proceedings that will have patent abusers dancing in the streets —the Bill is more aptly titled the “Support Trolls & Reverse Our Nation’s Progress under the AIA Act of 2015.” 

While this legislative grenade may not have much chance ever seeing the light of day, it is surprising that such misguided proposals would be seriously offered in the first instance.

Let’s go through some of the low-lights:

The STRONG Act attempts to tackle the difficulty in amending in AIA trial proceedings. (an effort already well underway at the PTAB). The bill seemingly proposes that the first amendment (if a reasonable number of claims) be granted as a matter of right. The Bill doesn’t specify who would be responsible for examining these amended claims, the very reason why the current amendment practice is by motion (i.e., burden is on movant to demonstrate patentability to an adjudicatory body).

Next, we get to the really fun stuff.  The Bill proposes that a Philips claim construction be applied in AIA trials along with a presumption of validity to issued claims, and a clear and convincing evidentiary standard for unpatentability. (for newly added claims existing standards would apply). That is, the PTAB will be applying two separate standards of patentability at the same time. Yes, you heard me right. Philips construction, presumption of validity, clear and convincing evidence. Sound familiar? 

So, basically, every reason patent challengers currently utilize the PTAB  would be taken away to align with district court practices. Sound good perennial patent troll targets?…but wait, there’s more.

Preliminary responses are proposed to include evidence, and if so, the petitioner can respond with a Reply.  Dont’ worry PTAB—sure its double, if not triple the work, and you will have about  a month left to read the entire record and issue a decision…details details. Oh, and the PTAB panel that issues the institution determination, forget about everything once the ink dries because a brand new panel has to conduct the actual trial. Administrative efficiency abounds! 

Lastly, and this is my favorite, if a reissue or reexamination is pending (where none of the heightened standards above would apply), there can be no IPR/PGR. So, if you are a patent troll, you simply file a Tanaka reissue before every licensing campaign. For the cost of a few thousand dollars a year you can effectively keep your patent out of the PTAB. What’s not to like about that type of legislative forethought?

There are other AIA related proposals in the Bill, such as limiting all AIA trials to those sued or charged with infringement, and adding a 1 year window to reexam filings for requsters served with a complaint for infringement…. basically the entire patent troll wish-list. These proposals would eviscerate 2+ years of progress under the AIA.  Patent challengers would be forced back to the friendlier standards of the reexamination system, an ex parte one at that. Yet, the AIA trial proceedings were designed to replace slow and unpredictable reexamination proceedings. AIA trials have been wildly successful in reducing the costs of litigation and eliminating problem patents.

The problem for patentees isn’t the PTAB, it’s the outdated practices of patentees that are broadly drafting patents without a care for validity. This is because surviving district court scrutiny is not a pressing concern given the protective standards applied. Bringing that deferential analysis to an expert agency, where amendment is encouraged for reasons of public policy, is nonsensical and would greatly fuel abusive litigation.

There is much wrong with the over-reaching of the Goodlatte Bill. But, if the Senate is trying to prove that it can come up with the most ill conceived ideas….game, set and match!

This mess will continue for the rest of 2015.