October PTAB CLE

A reminder that an exciting PTAB related CLE program is a week away. Don’t miss the Chicago-Kent College of Law’s Power of the PTAB: The New Authority in Patent Law on Friday October 20th. (agenda below)

Part I: Navigating the PTAB

8:35–9:35 am

Reasonable Error Correction or Death Squads — Is the PTAB’s Invalidation Rate Too High or Just Right?

Moderator: Paul Henkelmann (Fitch Even)

Speakers: Alison Baldwin (McDonnell Boehnen Hulbert & Berghoff LLP), David Killough (Microsoft); Jay Knobloch (Trading Technologies); Daniel Ravicher (Miami); David Schwartz (Northwestern)

9:35–10:35 am

PTAB Repetition — Multiple, Duplicative, and Sequential PTAB Challenges

Moderator: Erick Palmer (Mayer Brown)

Speakers: Christen Dubois (Facebook); Joshua Goldberg (Finnegan); Judge William Saindon (PTAB); Mark Stewart (Eli Lilly); Jonathan Stroud (Unified Patents)

10:35–10:50 am

Coffee break

10:50–11:05 am

Interlude: Presentation by the Chicago-Kent Patent Hub

11:05 am–12:05 pm

Convincing the PTAB — Developing and Presenting Evidence in PTAB Proceedings

Moderator: Steven Jedlinski (Holland & Knight)

SpeakersJudge Chris Kaiser (PTAB); Scott McKeown (Ropes & Gray); Judge William Saindon (PTAB); Melissa Wasserman (Texas)

12:05–12:10 pm

Announcement of the Chicago-Kent Journal of Intellectual Property as the official publication of the PTAB Bar Association. Continue Reading The Power of the PTAB Next Friday

Aqua Products: A Gift to the PTAB

Yesterday I explained why In re Aqua Products would not result in PTAB Motions to Amend being any more attractive or ultimately successful. This is because Motions to Amend are rarely advisable in litigation scenarios given intervening rights. And even where viable, such infringement-inspired amendments are almost always too incremental in nature to distinguish over the art. That said, Aqua Products is an absolute game changer for the agency itself.

With the burden of patentability now offloaded from the Motion to Amend, such motions can now be entered (i.e., granted) before reaching the ultimate question of whether or not the amended claim is actually patentable. As upward of 60% of pre-Aqua motions failed on patentability grounds, one can expect that the grant rate of such motions to now exceed 60%.

For this reason, Aqua Products is manna from heaven for the agency. Continue Reading Aqua Products Hoists PTAB Critics by Their Own Petard

Federal Circuit Flips Burden in PTAB Motion to Amend

For PTAB practitioners, the en banc decision in In re Aqua Products is a complete non-event. While the decision has been embraced as a net positive for Patentees, practically speaking, it will not move the needle on amending at the PTAB.

Aqua Products held that it is improper for the PTAB to place the burden of persuasion on the Patentee relative to the patentability of new/amended claims. Going forward, this burden of persuasion will rest with Petitioners (as it does for originally challenged claims 35 USC § 316(e)). (here)

While this shift may be seen as a positive for Patentees, the difficulties/unpopularity in amending at the PTAB never had anything to do with an improper shifting of the burden of patentability.

Continue Reading In Re Aqua Products: Much Ado About Nothing

Broadest Reasonable Does not Mean Broadest Possible!

The USPTO applies a broadest reasonable claim interpretation (BRI) to patents and patent applications. The abbreviation “BRI” is often used to reference the full claim interpretation standard, which is the broadest reasonable interpretation in light of the specification, from the perspective of one skilled in the relevant art. (MPEP 2111)

Unfortunately, a complete BRI analysis is often mistaken by overemphasis of the “BRI” mantra. That is to say, the proper test is not simply a “broadest reasonable interpretation” of claims in a linguistic sense. Rather, a proper  broadest reasonable interpretation of the claims is one that is consistent with the specification of the subject application/patent. While it is true that limitations from a patent specification may not be imported to the claims, the USPTO often times confuses this prohibition with the required contextual consideration of the specification.

In 2010, the CAFC strongly cautioned the USPTO on reading claims independent of a patent specification during patent reexamination in In re Suitco Surface (CAFC 2010). Last week, the agency was reversed again for failing to conform the “reasonableness” determination with the scope of the patent specification. Continue Reading Patent Prosecutor’s Toolbox: The Better Half of BRI

September Webinar to Focus on Expected Changes to PTAB Practice

This month’s edition of the PatentsPostGrant.com free webinar series will be held on Thursday September 28th @12:30 (EST). The September webinar is entitled: The Evolution of PTAB Trial Practice (speakers: Scott McKeown & Gaby Higgins). As the title suggests, the webinar will cover the expected impact and possible changes resulting from:

Register (HERE).

The formal portion of the webinar will begin at 12:30 Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period. To attend the webinar please sign up via the link above. You will receive a registration confirmation email immediately. Two hours prior to the webinar you’ll receive another email with a link and instructions for joining the presentation. CLE credit will be provided (CA, NYC, VA).

Oil States/CAFC to Unravel “Litigation” Premise

Sovereign immunity from proceedings of the Patent Trial & Appeal Board (PTAB) has become inextricably linked with the Oil States debate now before the Supreme Court. That is, the 7th amendment argument in Oil States and the 11th amendment argument for sovereign immunity at the PTAB are both tied to the same basic, threshold premise — IPR is a trial proceeding akin to an Article III lawsuit.

In Oil States, the “trial argument” is made to distinguish IPR proceedings from patent reexamination. It is argued that because an IPR is more trial-like compared to the earlier, examination based system, a jury trial is now required, consistent with the 7th Amendment.

In the sovereign immunity context, immunity applies if an administrative proceeding is similar to civil litigation. Fed. Mar. Comm’n v. S.C. State Ports Auth., 535 U.S. 743 (2002). But, some judges of the CAFC have already signaled a willingness to unravel this “IPR is a trial” premise, and it is my expectation that Oil States will follow suit. Continue Reading Sovereign Immunity at the PTAB a Temporary Phenomena?

Boardside Chat Tomorrow

Tomorrow, Tuesday, September 12, 2017 from 12-1 p.m. ET the Patent Trial & Appeal Board (PTAB) will conduct a special “Boardside Chat” in which representatives from AIPLA, IPO, ABA, PTAB Bar Association, and Federal Circuit Bar Association will interview the Chief Judge on the 5th year anniversary of the PTAB.

The program is free to attend.  Discussion topics include PTAB procedures, the latest statistics, and new developments.  The program also will include an opportunity to “Ask the Chief Judge” your questions.

Webinar access information is below.

Event: PTAB Boardside Chat Webinar

Webinar Access link: https://uspto-events.webex.com/uspto-events/onstage/g.php?MTID=e5931807cab2f9531c78d30f611670e0f

Date and time:Tuesday, September 12, 2017 from 12-1 p.m. ET

Duration: 1 hour

Event number: 394 265 268

Event password: 3MfdVtba

Audio conference: Call-in toll number (US/Canada): 1-650-479-3208

Access code: 394 265 268

 

PTAB Precedent (Not Surprisingly) Embraces CAFC Precedent

As I pointed out last week, it is a heavy lift for the Patent Trial & Appeal Board (PTAB) to designate a precedential decision.  For this reason, nothing but the most straightforward of issues can be decided and designated “precedential.”

The PTAB issued a prime example of a seemingly straightforward precedential decision a few days ago in Ex parte McAward, Appeal 2015-006416 (PTAB Aug. 25, 2017), Section I.B. (here). This PTAB precedent makes clear that the USPTO assesses indefiniteness pursuant to the Federal Circuit’s guidance in In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).

While some have expressed shock at the PTAB pronouncing a different standard than that expressed in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), this is just a restatement of the Board’s status quo since the Packard decision. (It is not exactly shocking that the Board is following the guidance of its reviewing court).

The more interesting issue is whether the Court’s reasoning in Packard is equally applicable to AIA trial proceedings? Continue Reading New PTAB Precedent Endorses In re Packard….But For How Long?

Boardside Chat Today

As discussed yesterday, evidentiary issues are handled quite differently at the PTAB as compared to the district court. Right on cue, the PTAB will host a Boardside Chat today to address common evidentiary issues in AIA trial proceedings from 12-1 p.m. ET.

The webinar panel will include Administrative Patent Judges Medley, Chang, and Cox.  The discussion will cover common evidence issues that occur in AIA trial proceedings before the Board. The program is free to attend.

Webinar access information is below.

Event: PTAB Boardside Chat Webinar

Registration available online

Date and time: Thursday, August 31, 2017 from 12-1 p.m. ET

Duration: 1 hour

Event number: 397 231 324

Event password: Typ6Pg2q

Audio conference: Call-in toll number (US/Canada): 1-650-479-3208

Access code: 397 231 324

 

Preserving The PTAB Trial Record

An objection operates to preserve errors in admitting evidence. At the PTAB, the manner and timing of making evidentiary objections is governed by agency rule rather than the Federal Rules of Evidence (FRE). 37 C.F.R. § 42.64.  An Offer of Proof, on the other hand, preserves errors in excluding evidence. But, to date, Offers of Proof have not been a recognized mechanism of PTAB trials — not formally anyway.  This is despite the fact that there is no agency rule on point to displace FRE 103, and the FRE apply to PTAB trials. 37 C.F.R.§ 42.64.

That is not to say that PTAB litigants are unable to otherwise preserve the record when evidence is denied entry, or that the need to preserve such is anywhere near as pronounced as compared to the district court. Only that PTAB litigants may have to work a little harder to preserve such issues for appeal. Continue Reading PTAB Offers of Proof?