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.


Continue Reading Separate Article III Standing Not Necessary for PTAB Appellees

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.


Continue Reading What to Do With 112 Issues in IPR?

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:
Continue Reading PTAB BoardSide Chats for 2017

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.  

Continue Reading CAFC Finds PTAB Has Discretion to Augment Trial Grounds

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.
Continue Reading CAFC Weighs in on Negative Claim Limitation Support

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.
Continue Reading Pendency Statistics on Petitions Filed During Patent Reexamination

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.”  


Continue Reading CAFC Finds PTAB Claim Analysis Incomplete Relative to Markman

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.

Continue Reading Senate Democrats Propose Bill to Gut AIA Trials

Requests for Comment Touch Upon Claim Construction Standards at the PTAB

Back in June, the USPTO issued a Request For Information (RFI) in the Federal Register. The Notice, entitled, Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board posed 17 questions for consideration by those stakeholders involved in the patent challenge proceedings of the America Invents Act (AIA). Responses are due to the USPTO on September 16th, and, will be considered by the agency for the purpose of optimizing AIA trial proceedings going forward.

Over the next two weeks, I will explore the issues driving these queries as well as proposals for resolving problem areas. First up, is the question directed to claim construction, that is:

1. Under what circumstances, if any, should the Board decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?
Continue Reading The PTAB Cannot Adopt a Phillips Claim Analysis for AIA Trial Proceedings