Public Notice & Transparency

Yesterday the PTAB announced an update to its Standard Operating Procedure (SOP 1). The update explains how judges are paneled, recused, and staffed on a given case. This latest revision aligns with recently updated Paneling Guidance, Standard Operating Procedure 4, and Director Review procedures. In other words, this SOP is just

Amendment of § 256 Removed Previous Prohibition on Deceptive Intent

With the AIA, Congress amended § 256 to remove the requirement that the “error” of omitting an inventor from a patent must occur without “deceptive intention.”  That is not to say that such a deceptive intention would be free from an inequitable conduct charge, but, at least for purposes of the administrative correction, intent is no longer a consideration of the agency.

Few cases have explored the impact of this amendment, until Egenera, Inc. v. Cisco Systems, Inc, which held the correction —and unraveling of the same correction —is not prevented by the amended statute.
Continue Reading AIA Change Allows for Deceptive Patent Corrections

PTAB Invalidation of Original Claims Bars Pre-issue Damages for Reissued Claims

A surprisingly underutilized patenting mechanism — the reissue patent application — should be an essential component of any portfolio building practice.  The reissue application allows patent owners to correct/adjust claim scope (in some cases broaden), add additional claims, and perform a number of other corrections to an originally issued patent prior to asserting it.

For example, where a Patent Owner has its claims cancelled that the PTAB, the Patent Owner may seek to reissue its patent thereafter with new, narrower claims.  (This option may be more attractive than the PTAB’s amendment process, which is limited in the number of claims that may be raised, and, reissue is not an inter partes process).

But, reissue is not  a magic time machine. That is, trying to resurrect a damages case linked to your earlier cancelled claims by arguing that your narrowed, reissue claims are somehow the same scope, is a losing argument (not surprisingly)
Continue Reading Reissue Claims Substantially Identical to Invalidated Claims Ensnared by Collateral Estoppel

AIA Trial Fees Increasing + New Pro Hac Fee

The United States Patent and Trademark Office (USPTO) is increasing Patent and Patent Trial and Appeal Board (PTAB) fees for a second time in three years.  The new fees schedule, effective October 2, 2020, incudes a new fee for non-registered practitioners to appear before the PTAB pro hac vice.  Patent reexamination and reissue fees will increase by roughly 5%. )
Continue Reading PTAB Trial Fees Increase 25% in October

New Pilot Will Not Accelerate Post-Grant Matters

Last week the United States Patent and Trademark Office (USPTO) announced plans for the Patent Trial and Appeal Board (PTAB) to begin accepting petitions for expedited resolution of ex parte appeals. The program, entitled “Fast-Track Appeals Pilot Program” launched July 2, 2020. (here)

But, the program may not benefit all appellants.  And it is important to understand that the program is not offering an appeal timeline (start to finish) that spans 6 months.
Continue Reading PTAB Fast-Track…Not So Fast

Recapture, Orita Doctrine & Same Invention Limit Scope

As provided by 35 U.S.C. § 251, Patent Reissue is a mechanism by which a Patent Owner may correct an error in an issued patent. A proper reissue application is directed to an error that renders an issued patent wholly, or partly, inoperative. Such an error could be the mere absence of narrower dependent claims. In re Tanaka (CAFC 2011)

Although patent reissue allows for the correction of mistakes in claim scope, the proceeding is not a “do-over” of the original prosecution — not even when broadening. For example, claim scope previously surrendered may not be “recaptured” via a broadening patent reissue. This same public reliance policy reasoning is utilized in other obscure aspects of patent reissue practice. For example, the Orita doctrine, prevents Patent Owners from obtaining by reissue, restricted claims that were never pursued.

This week, the Federal Circuit revisited a further limit on broadening patent reissues it last addressed in 2014.
Continue Reading Broadening Reissue Patents Have Limits

Patent Owners Largely Ignore Ex Parte Amendment Options

A few weeks back the USPTO issued a Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding (here). The Notice provided no new information, instead, it served to remind the public that reissue/reexamination options exist to amend claims outside of AIA trials. Given the continuous public outcry over AIA amendment difficulties, one would expect a fairly robust jump in reexam/reissue filing rates—especially as these options provide an ex parte amendment process.

However, as recent Patent Trial & Appeal PTAB statistics show, very few Patent Owners are pursuing these traditional amendment paths.
Continue Reading Amending Outside of the PTAB: Why So Few Reexams/Reissues?

Thursday Webinar Addresses Parallel Post-Grant Proceedings

This Thursday, April 25th, from noon to 1 p.m. ET, the Patent Trial and Appeal Board (PTAB) and the Central Reexamination Unit (CRU) will host a Boardside Chat webinar presenting information on the interplay of AIA trial proceedings under the America Invents Act (AIA), reissue applications, and reexamination proceedings.

Federal Register Notice Advertises Alternative PTAB Amendment Options

Last Friday the USPTO published a notice in the Federal Register entitled: Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding (here). The Notice outlines considerations for stakeholders pursuing reexam/reissue as an alternative amendment path to Patent Trial & Appeal Board (PTAB) AIA trial mechanisms. While, the Notice is careful to emphasize that each case will be considered on its own merits, and provides aspects of the record that will be considered in this regard, practically speaking, most such proceedings will be stayed pending an AIA trial.

The true point of the Notice is to advertise that there are other, ex parte options for amending patents that are separate and apart from the PTAB’s controversial amendment processes.
Continue Reading PTAB Amendment Alternatives: Patent Reissue & Reexamination

CAFC Decides Patent Reissue was Improperly Broadened Based on Previous Markman Definition

Yesterday, in ArcelorMittal France v. AK Steel Corp. (CAFC 2015), the CAFC considered the impact of a reissue of U.S. Patent 6,296,805 on a previous appeal decision.  The ‘805 patent, directed to rolled steel, recited the claim limitation “very high mechanical resistance.”  In an earlier infringement suit between the parties, the district court found this terminology to define “a tensile strength greater than 1500 MPa.” This construction was upheld by the CAFC on appeal, and the case as remanded as to other issues.

During the appeal of the claim construction, Patentee reissued the ‘805 patent as reissue patent RE44,153.  The reissue patent included a new claim, claim 23, that recited “mechanical resistance in excess of 1000MPa.”  The originally construed claims remained in the reissue patent. Once back in the district court, Patentee amended its complaint to include claim 23 of the new reissue patent.  Thereafter, on summary judgement, the district court ruled the reissue patent invalid for improper broadening. In the second appeal, decided yesterday, the CAFC agreed that claim 23 of the ‘153 reissue was improperly broadened.  

Ostensibly, the USPTO did not consider 1000MPa limitation as broadening relative to the specification of the ‘805 patent.  On the other hand, the CAFC found  “greater than 1000MPa” to be broadening based upon the district court’s previous construction that the scope of “very high mechanical resistance” was greater than 1500MPa. This difference in construction highlights the potential incongruity between USPTO and district court claim construction practices.

Continue Reading Patent Reissue Breadth Anchored to Previous Markman Construction