Two PTAB Boardside Chats This Week

Today from noon to 1 PM (EST), Chief Judge David Ruschke will provide additional information about the impact of SAS on AIA trial proceedings. He will also share new information about motion to amend practice, and discuss the recently published Notice of Proposed Rule-making on the claim construction standard to be applied during AIA trials.

The webinar is free and open to everyone to attend. Access (here)

Later this week, a second Chat will be held on Thursday from noon to 1 PM (EST). The Thursday Chat will discuss “Motions to Exclude and Motions to Strike in AIA Trial Proceedings.” PTAB Judges Justin Arbes and Kevin Cherry will present and address audience questions.  Access (here)

Aqua Products Results in De-designation of Previous Amendment Precedent

In view of the decision from the United States Court of Appeals for the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), regarding motion to amend practice and procedure in AIA trials, the Patent Trial & Appeal Board (PTAB) has de-designated as precedential MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040 (PTAB July 15, 2015) (Paper 42) and has de-designated as informative Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027 (June 11, 2013) (Paper 26). Both decisions have been removed from PTAB’s Precedential and Informative Decisions web page.

Concurrently, the PTAB has designated as informative the following order in Western Digital Corp. v. SPEX Techs., Inc., which provides guidance on motion to amend practice in AIA trials such as: (1) contingent motions to amend; (2) the burden of persuasion that the Office applies when considering the patentability of substitute claims; (3) the requirement that a patent owner propose a reasonable number of substitute claims; (4) the requirement that the amendment respond to a ground of unpatentability involved in the trial; (5) the scope of the proposed substitute claims; (6) the requirement that a patent owner provide a claim listing with its motion to amend; (7) the default page limits that apply to motion to amend briefing; and (8) the duty of candor.

SAS Weighs in Favor of Stay Pre-Institution

At the time SAS Institute first raised its challenge to the partial institution practices of the Patent Trial & Appeal Board (PTAB), I explained that should this argument ultimately prevail that it would be bad news for Patent Owners. Patent Owners facing a motion to stay pending PTAB review frequently leveraged partial institutions to defeat the stay. Such motions were denied because one of the factors considered in the motion analysis is the potential for “simplification of issues for trial.”  And where a trial would eventually be conducted regardless of PTAB outcome — the case when there was a partial institution — this factor weighed strongly in favor of Patent Owners continuing the district court litigation .

Post-SAS, this argument is now gone. The impact of SAS on common stay scenarios is already being felt by Patent Owners. Continue Reading New SAS Reality Impacts Motion to Stay Analysis

IPO Chat Channel Provides Final Word on SAS

This Thursday the IPO Chat Channel will feature the Chief Judge of the Patent Trial & Appeal Board (PTAB) on the program entitled: A New PTAB Landscape: The Impact of SAS, Recent Federal Circuit Decisions, and the Proposed Change to the BRI Standard. The program will explore the path ahead after SAS Institute and other recent developments impacting PTAB practice. (register here)

Pro-Patent Owner Options

The new Director of the U.S. Patent & Trademark Office (USPTO) has issued a Notice of Proposed Rulemaking (NPRM) in record time. With only a few weeks on the job, the Director issued a NPRM to switch the Broadest Reasonable Interpretation (BRI) currently used in Patent Trial & Appeal Board (PTAB) trial proceedings to a Phillips claim construction. The proposal was quickly lauded by Patent Owners believing that the application of the Phillips standard by the PTAB will lead to narrower claim constructions, and thus, more patents being upheld by the agency. But, as I pointed out previously, in practice, BRI is rarely different from a Phillips construction. In fact, utilizing the same standard at the PTAB as in the courts might only make matters worse for Patent Owners from a monetization perspective.

Impact of the proposed claim construction change aside, the speed at which the Director has acted speaks to his keen interest in improving the PTAB playing field for Patent Owners. With the Director expected to issue further proposals to aid Patent Owners, below are some likely candidates. Continue Reading How Might the Director Improve the PTAB for Patent Owners?

Government Brief Faults Tribal Immunity Logic

On June 4th, the Federal Circuit will hear arguments in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc.  As a reminder this case will explore whether principles of sovereign immunity prevent the Patent Trial & Appeal Board (PTAB) from conducting an Inter Partes Review (IPR) of a patent owned by a Native American tribe.

In advance of the upcoming hearing, the U.S. Dept. of Justice has filed its amicus brief supporting the agency’s decision to deny immunity.  The government brief explains that “[n]o principle of sovereign immunity entitles an Indian tribe to withhold a public franchise from reconsideration by the superior sovereign that granted it.” Continue Reading PTAB’s Sovereign Power Superior to State/Tribes

Full-Day Webinar Offers Comprehensive PTAB Coverage

PLI’s PTAB Trials 2018 will be held this Tuesday, May 15th in San Francisco. If you can’t get there in person, strongly consider the webinar of this full-day event. PLI’s comprehensive program is the longest running and most widely attended PTAB-related CLE in existence. Rather than just exploring PTAB trial practices, this program is known for its 360° degree analysis of the PTAB on the overall patent ecosystem. This year’s program will provide the first, deep-dive analysis of the recent changes introduced by the Supreme Court, as well as proposed and expected USPTO rule packages.

This year’s program also adds unique segments dedicated to licensing and monetization strategies in Silicon Valley, as well as PTAB-centric patent prosecution practices. I am pleased to continue to chair this program alongside Robert Greene Sterne of the Sterne Kessler firm. (The New York stop of this program will be September 21st and will include a similar monetization module directed to Bio/Pharma)

Hope to see you there.

 

Existing BRI Litigation Cover Will Be Blown

While the Patent Trial & Appeal Board’s (PTAB) plan to switch from the broadest reasonable interpretation (BRI) toPhillips claim construction may not be the magic bullet that Patent Owner’s expect, the switch will pose strategic problems for petitioners. Even though the PTAB rarely discerns a difference between a BRI and Phillips constructions, the courts think very differently than the expert agency. For this reason, Petitioners often cited to the different claim construction standards to explain away the application of a broader read at the PTAB as compared to that urged in the court. This enabled petitioners to take positions on claim breadth in PTAB petitions that would otherwise undermine a non-infringement position if advanced under Phillips.

Going forward at the PTAB under Phillips, petitioners will be forced to commit to a one-size-fits-all claim construction. Continue Reading A Phillips Construction Will Complicate PTAB Petition Drafting

Change in PTAB Claim Construction May Make Matters Worse for Patent Owners

As I pointed out back in March, the Patent Trial & Appeal Board’s (PTAB) switch from the Broadest Reasonable Interpretation (BRI) standard to a Phillips claim construction for AIA Trial Proceedings was telegraphed in advance. The rule package, released today (here), is limited to AIA trial proceedings (IPR, PGR, CBM). Left untouched are patent interference, reexamination, reissue, supplemental examination and derivation proceedings. Upon final rule issuance (late summer/fall) AIA trial proceedings will apply a district court or “Phillips” claim construction. Given the current proposal it appears that this change will apply to all pending proceedings.

Patent Owners were quick to applaud the proposed claim construction change as a huge win……it’s not. Continue Reading Patent Owners May Rue the Day They Pushed the PTAB to Phillips

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?