PTAB Announces New Informative Decisions

The Patent Trial and Appeal Board (PTAB) has designated the recent decision granting a request for additional discovery in Arris Group, Inc. v. C-Cation Techs., LLC, IPR2015-00635 (Paper 10) (PTAB May 1, 2015) as an informative decision. The decision grants Patent Owner’s Motion for Additional Discovery on issues of privity pre-institution. The decision provides guidance on the types of reasonable and narrowly tailored requests for additional discovery concerning privity and real party-in-interest issues that the Board frequently grants. The decision can be found (here).

(Decision itself does not provide much feedback on narrowly tailored requests. Instead, it highlights the importance of uncovering potential “smoking guns” through external efforts before seeking discovery at the PTAB).

As to CBM estoppel, a new decision is provided to clarify the application of estoppel under 35 USC 325(e)(1) in Westlake Services LLC v. Credit Acceptance Corp., CBM2014-00176 (Paper 28) (PTAB May 14, 2015). In this decision, the Board held that estoppel is applied on a claim-by-claim basis. “By its terms, estoppel is invoked under Section 325(e)(1) as to ‘a claim in a patent’ that ‘results in a final written decision under’ 35 USC 328(a).” The decision declines to terminate the present CBM patent review, because the Final Written Decision in a prior CBM patent review in fact only ruled upon the patentability of claims not at issue in the present CBM patent review. In the prior CBM, the Board declined to institute review of the claims before the Board in the present CBM patent review. Because these claims did not result in a Final Written Decision under Section 328(a), the panel held that estoppel under Section 325(e)(1) does not apply to those claims. The decision can be found (here).

(This decision has a unique set of circumstances. As alluded to in this decision, petitioners seeking to re-challenge claims missed in a first institution are typically denied under 325(d). For that reason, this decision is mostly academic). 

Duty of Candor Controls “Prior Art Known to Patent Owner”
UPDATE: This decision is now designated as “Informative” (here)

Last week, an expanded panel of the Patent Trial & Appeal Board (PTAB) clarified the required showings necessary to a successful motion to amend. Of note, the expanded panel included Deputy Chief Nathan Kelly as well as Vice Chief Scott Boalick. In the decision, Masterimage 3D. Inc. v. RealD Inc. (IPR2015-00040) (here), the Board clarified the meaning of the Idle Free phrase: “prior art of record and also prior art known to the patent owner.”

As outlined in Idle Free Systems v. Bergstrom Inc., (IPR2012-00027), amendment during an AIA trial proceeding is by motion. As such, the burden is on the movant to demonstrate entitlement to the patentability of amended claims. One aspect of Idle Free that movants have struggled to digest is the metes and bounds of “prior art known to Patent Owner.” In MasterImage, the Board clarified that the “prior art known to Patent Owner” is linked to the art that would trigger the Patent Owner’s Duty of Candor.

More specifically, the Board explained the Idle Free language: “prior art of record and also prior art known to the patent owner” by distinguishing between record art, and that which would necessarily be produced under the Duty of Candor. 37 C.F.R. § 42.11.

With respect to “prior art of record…” the Board explained this information as follows:

The reference to “prior art of record” in the above-quoted text, as well as everywhere else in Idle Free, should be understood as referring to:
          a. any material art in the prosecution history of the patent;
          b. any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review;
              and
          c. any material art of record in any other proceeding before the Office involving the patent.

As to the more open ended language “prior art known to the Patent Owner,” the Board clarified this language as:

The reference to “prior art known to the patent owner” in the above quoted text, as well as everywhere else in Idle Free, should be understood as no more than the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11, in light of a Motion to Amend.     .    .     . [W]hen considering its duty of candor and good faith under 37 C.F.R. § 42.11 in connection with a proposed amendment, Patent Owner should place initial emphasis on each added limitation. Information about the added limitation can still be material even if it does not include all of the rest of the claim limitations.

This decision tracks Director Lee’s blog comments on possible changes to PTAB amendment practices. Back in March, Director Lee explained:

Additionally, regarding motions to amend, we are contemplating proposed changes to emphasize that a motion for a substitutionary amendment will always be allowed to come before the Board for consideration (i.e., be “entered”), and for the amendment to result in the issuance (“patenting”) of amended claims, a patent owner will not be required to make a prior art representation as to the patentability of the narrowed amended claims beyond the art of record before the Office. Of course, the duty of candor and good faith requires the patent owner to make of record any additional prior art material to patentability known by the patent owner. These contemplated changes would be intended to more noticeably limit the burden on the patent owner, even though the patent owner is the party moving for the change in the patent.

In short order, the Board has now lessened the burdens on Patent Owners (above), expanded page limits for motions to amend, added appendix options to further free up pages, and provided (via rule change in a few weeks) a more robust amendment framework. (Given the clarification of MasterImage, it is expected that the forthcoming rule package will only address entry as a matter of right.).

Would-be PTAB reformers and critics are quickly losing their “impossible PTAB amendment” mantra.

Patent Reform Effort Slides…as Expected

An update to today’s cheat sheet.
Given the burgeoning opposition to the “Innovation Act” (H.R. 9), the current bill was pulled from floor consideration this morning.  Back to the drawing board.

As to at least the PTAB changes, the focus can now appropriately turn to the imminent rule package of the agency.

USPTO, you are on now on deck.

PTAB Proposals on House Side

Last week, I summarized the PTAB modifications proposed in the Senate’s Patent Act” (S.1137).  While there is an expectation that at least the House will try to bring “Innovation Act” (H.R. 9). to the floor for a vote, meaningful progress seems unlikely. Opposition to the bills has ramped up in recent days from conservative groups, and proponents of competing bills.  Coupled with the looming five week summer recess, it is inevitable that  Congress will kick the proverbial can down the road.

As pointed out previously, a rule package from the USPTO is expected in the July-August time frame that could moot many of these issues.  With that in mind, a delay in legislative action would be prudent.

That said, here are the current proposals of H.R. 9 that are directed at PTAB practice.
1.      Scope of waiver – PGR
§ 325(e)(2) is modified so that a petitioner, RPI and privy are only barred, after a final written decision, from asserting in a US court any ground that the petitioner raised during the PGR, removing the existing bar that also covers any ground that “reasonably could have been raised.”

(Some feel that the estoppel provision of “raised or reasonably could have raised” is especially daunting for PGR given the ability to raise any ground of unpatentability (i.e., 112, 101, on sale bar, public use, patents and printed pubs.  it is also argued to be  “scrivener’s error” in the AIA.)

2.      Claim Construction – IPR(PGR)
§ 316(326) is modified to require claims be construed as in a civil action, i.e., apply Phillips, including construing according to the ordinary and customary meaning as understood by one of ordinary skill and prosecution history.

§ 316(326) is further modified to require the PTO to consider previous constructions by a US court.

(As I have pointed out repeatedly, this is likely to hurt patentees more than help them)

3.      Institution Decision – IPR(PGR)
§ 316(326) is modified to bar institution unless the petitioner certifies the petitioner and RPIs:

–          have no ownership and will not acquire a financial instrument designed to hedge or offset a decrease in market value of a patent owner’s equity security during a period following the filing of a petition (i.e., the hedge fund exception); and
–          have not demanded payment in exchange for not filing an IPR(PGR) unless the petitioner/RPI has been sued for infringement.

(Plainly targets hedge fund filings, but PTAB is likely to take care of that problem on its own. Can’t hurt. )

4.      Preliminary Response – IPR(PGR)
§ 313(323) is modified to enable a preliminary response to include affidavits/declarations of supporting evidence and opinions. 

§ 313 is further modified to allow the PTO to accept a reply by the petitioner to respond to new issues raised in the preliminary response.

(PTAB expected to propose a similar modification this summer)

5.      Due Process – IPR(PGR)
§ 316(b)(326(b)) is modified to require the PTO consider the due process rights of the patent owner and petitioner in prescribing regulations.

(The assumption here is that the PTO prescribes regulations that are unlawful, strange.  Due process = full fledged district court litigation to many critics.)
 
6.      Serial/Redundant Petitions – PGR
The following cases are designated as precedential with respect to § 325(d) and (e):

–          Dell (IPR2015-00549, Paper 10)
–          Zimmer Holdings (IPR2014-01080, Paper 17)
–          Prism Pharma (IPR2014-00315, Paper 14)
–          Unilever (IPR2014-00506, Paper 17)

(Interest is limiting “second bite at the apple” filings. PTAB has had some trouble designating cases precedential given the existing guidelines. That said, given the incoming workflow, these decisions are very closely followed.)

7.      Joinder – IPR
§ 315 is modified to add subsection (c), providing discretion for issue joinder.  

(Like the proposal above, this essentially makes the Destination Maternity decision precedential.)

You can expect all of these proposals to change significantly, or disappear altogether before these bills get anywhere near close to passage (if ever). Still, it is worthwhile to understand the aspects of PTAB practice being scrutinized by opponents.  My expectation is that the vast majority of these criticisms will be addressed by the PTAB in the expected rule package.

June Program Rescheduled for July 14th

Tomorrow, July 14th, the USPTO’s Patent Trial & Appeal Board (PTAB) will host its third  “Boardside Chat” lunch webinar for 2015 (postponed from June). The topic is “Discovery in AIA Trials.”  I will be participating on the practitioner panel. (No CLE)

Instructions for the webinar are found below.

WEBINAR ACCESS INFORMATION: 
Date and time: Tuesday, July 14, 2015 12:00 pm

Eastern Daylight Time (New York, GMT-04:00) 
Duration: 1 hour

Event number: 996 990 002
Event password: 123456

Event address for attendees: https://uspto-events.webex.com/uspto-events/onstage/g.php?MTID=ebe8a98b2c5a1c74d20772b8ddd23e771(link is external)

Audio conference:  
Call-in toll number (US/Canada)
1-650-479-3208
Access code: 996 990 002 
Caption Link: http://www.captionedtext.com/client/embed.aspx?EventID=2641599

CAFC Endorses PTAB Construction of “Business Method Patent”

Yesterday, the CAFC issued its long awaited decision in the dispute between Versata and SAP (here). The appeal stemmed from the very first Covered Business Method (CBM) patent challenge proceeding. On appeal, one of Versata’s (patentee) main challenges was directed to the statutory definition of “covered business method” and “technological invention” as applied by the Patent Trial & Appeal Board (PTAB) in instituting the CBM proceeding. That is, Versata’s argued that its patent did not qualify as a CBM patent, and, therefore, the PTAB had no right to institute the review.

In rejecting Versata’s arguments, the CAFC found that the PTAB applied the appropriate definitions. All other issues were also decided against Versata, including the determination that 101 challenges were appropriate for CBM proceedings, whether or not BRI may be applied in PTAB proceedings (earlier decided in Cuozzo decision) and that the Versata patent was unpatentable as being directed to an abstract idea (price calculations). Seems the Court has become quite the “death squad” for patentee appeals, affirming the PTAB in almost all but rare exceptions. 

Yet, while a loss on all fronts for Versata, on the bright side, Versata was already paid several hundred million dollars from SAP last fall — for infringing Versata’s abstract ideas.

Of particular note for practitioners is the Court’s willingness to review the institution decision in limited respects. That is, despite earlier determinations that found a bar to appealing institution determinations, the Court distinguished the dispute over CBM eligibility as pertaining to the PTAB’s “ultimate authority to invalidate.”  

To determine this reviewability issue, two related questions must be answered: first, does the § 324(e) judicial review bar permit judicial review, when conducted with regard to the final written decision, of PTAB compliance with any requirement that involves the ultimate authority of the PTAB to invalidate a patent; second, if yes, is the restriction of § 18 to CBM patents such a limit. We answer both questions in the affirmative, and therefore reject the contention that we may not review whether the ’350 patent is a CBM patent covered by § 18.

(emphasis added)
As I mentioned earlier this week, other issues that could fall into this category would include RPI/Privity. Still other possibilities being disputes about applicable estoppel, and statutory bars to petition consideration such as 35 U.S.C. §§ 315(a) and (b). Disputes over issue joinder, 315(c), would also seem to be fair game.

As to clarity on the definition of “business method” and technological invention, the Court pointed out:

The PTAB observed that in its notices the USPTO considered the legislative debates and history, as well as the overall transitional program itself.  . . . Also, the PTAB observed that in its final notice of rulemaking the agency explained that the legislative history supported the proposition that the definition be broadly interpreted to “encompass patents claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.”                                                             
                                                                              .        .       .        .        .
We agree with the USPTO that, as a matter of statutory construction, the definition of “covered business method patent” is not limited to products and services of only the financial industry, or to patents owned by or directly affecting the activities of financial institutions such as banks and brokerage houses. The plain text of the statutory definition contained in § 18(d)(1)— “performing . . . operations used in the practice, administration, or management of a financial product or service”—on its face covers a wide range of finance-related activities. The statutory definition makes no reference to financial institutions as such, and does not limit itself only to those institutions.
                                                                             .        .       .        .        .
Furthermore, the expertise of the USPTO entitles the agency to substantial deference in how it defines its mission.

On the topic of technological invention, the Court explained:

As we are now instructed, the presence of a general purpose computer to facilitate operations through uninventive steps does not change the fundamental character of an invention. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).The PTAB viewed the invention typified by claim 17 as basically a method of determining a price. This was a determination that could be achieved “in any type of computer system or programming or processing environment,” and accordingly “no specific, unconventional software, computer equipment, tools or processing capabilities are required.”

Interesting reference to Alice in this portion of the decision. It has always been my opinion that if a petitioner can demonstrate CBM qualification that such a showing is substantially overlapping with a proper 101 showing. In fact, there has yet to be a single CBM instituted on 101 that failed at the time of final written decision.

Since its introduction, CBM filings have been devastating to business method patents; this is exactly what Congress intended.  When Congress created this special class of challenge it was to specifically defeat patents believed to be invalid under 101, but too cost prohibitive to defeat in district court. This decision will go a long way in maintaining the current momentum.

En Banc Rehearing of Cuozzo Appeal Denied

In a close decision, the Court of Appeals for the Federal Circuit (CAFC) denied rehearing in In re Cuozzo Speed Technologies (here). At issue in the request for en banc rehearing was whether or not the Patent Trial & Appeal Board (PTAB) should apply a broadest reasonable view of challenged claims, or apply a district court style construction (Philips). The majority dismissed the argument as one of legislative policy that is beyond the power of the Court to modify. Meanwhile, the dissent argued that the “new” proceedings of the PTAB were adjudicative in nature, provided limited amendment possibility, and therefore required a claim construction consistent with that applied in the courts. 

While the majority decision is short and to the point, the dissent is quite spirited.

The majority states:

Congress conveyed rulemaking authority to the PTO to prescribe regulations, inter alia, “establishing and governing inter partes review,” 35 U.S.C. § 316(a)(4), and the PTO has adopted the broadest reasonable interpretation standard for IPR proceedings, 37 C.F.R. § 42.100(b). In the absence of evidence of congressional intent to abrogate the broadest reasonable interpretation standard, we should not act to adopt a different standard based on our own notions of appropriate public policy. If the standard is to be changed, that is a matter for Congress. There are pending bills which would do just that.

The dissent, on the other hand, focused on the adjudicative nature of the PTAB trial proceedings, perceived congressional intent, and limited ability to amend..

Congress’s intent in creating a completely new type of PTO proceeding—one bearing the efficiency and finality of district court adjudications of patent validity—could not have been clearer. The panel majority fails to explain why Congress (or anyone else) would have thought it desirable or necessary for the Board to construe the claims during IPRs under a different legal framework than the one used by district courts.                                                                                                            .         .          .         .

With respect to amendments, the panel majority observes that “[a]lthough the opportunity to amend is cabined in the IPR setting, it is nonetheless available.” Id. at 15. But the court fails to explain how a “cabined” amendment process fits within our prior case law emphasizing the “readily” available nature of amendments in other proceedings in which the broadest reasonable interpretation is appropriate.

While the ability to amend in a PTAB proceeding is far from unfettered, the ability to amend in patent reexamination is also limited. For example, typically, amendment is only possible, once, after the first action. Substantive amendments attempted after final rejection are almost always denied. The dissent also makes much of 35 U.S.C. §316(d) allowing PTAB amendment by “permission” only.  I’m not sure that is a fair characterization of a motion opportunity that exists as a matter of right. Certainly the failure to meet the required showing will result in a denial of the motion, but, nonetheless, the opportunity to amend exists as a matter of right. While the PTAB denies motions in AIA trials, the PTO routinely rejects amendment in patent reissue and reexamination for the very same threshold reasons. The fact that reexam/reissue amendments remain in the record (as rejected claims) is more form than substance. And, of course, on the district court side there is never a possibility of amendment.

Also, while the AIA was designed to improve upon patent reexamination, changing the standard in AIA trials would leave reexamination, supplemental examination, and patent reissue untouched —all of which consider previously issued patent claims by applying a BRI analysis. The dissent does not address the potential for inconsistent interpretation by the PTAB if they are to operate using two different claim construction rubrics. (if you accept that there would be a meaningful difference). Judge Newman, in her separate dissent, addresses patent reissue.

And reissues are directed to correction of the patentee’s error; the purpose is to achieve correctness, not breadth. Contrary to the concurrence, the question before this court is not whether to “eliminate” BRI, but whether to impose it on issued patents, where it has not previously reposed.

While patent reissues are indeed filed to address “errors,” in my experience, such errors are almost always of claim scope. In fact there are entire lines of CAFC precedent directed to proper broadening, and recapture. BRI for issued patents is not new at all.

The debate on this issue will almost certainly rage on in Congress in the months ahead.

PTAB Proposals on Senate Side

With Congress headed toward a summer recess in a few weeks, it is expected that the pending patent reform bills will be front and center for July. Below is a high level overview of the PTAB proposals currently embodied in the Senate’s Patent Act” (S.1137).  As previously pointed out, many of these proposals are expected to be mooted in a matter of weeks by the PTAB’s July rule package.  Perhaps PTAB movement will cool the legislative appetite for these proposals, time will tell.

1.      Preliminary Response – IPR
§ 313 is modified to add subsection (b), which enables a preliminary response to include affidavits/declarations of supporting evidence and opinions.  In addition, a petitioner may seek leave to file a response to respond to new issues raised in the preliminary response.

(PTAB expected to propose a similar modification)

2.      Institution Decision – IPR
§ 314 is modified to permit non-institution if it “would not serve the interest of justice.”  Factors considered in making this decision include whether the grounds or arguments are the same or substantially the same as those considered and decided in a prior judicial or PTO proceeding and whether there is another proceeding or matter involving the same patent before the PTO.

(appears to target hedge fund filings, but PTAB is likely to take care of that problem on its own)

§ 314 is also modified to state that an IPR shall not be instituted on the basis that the evidentiary standard at the PTO differs from the one used in a court proceeding to adjudicate the claims in the petition.

(Also appears directed to hedgies/PTAB trolls that seek to re-purpose art of a litigation)

§ 315 is modified in subsection (b) to bar institution for “a particular claim” if the IPR is filed more than one year after the date that the petitioner, RPI or privy is served with a complaint alleging infringement of that claim.
§ 315 is also modified to allow a petitioner to add additional patent claims to an instituted IPR within 1 year after the date that the petitioner, RPI or privy was served with an amended complaint or other paper alleging infringement of those claims for the first time.

(Both changes address a common driver behind issue joinder practices, namely, amedned complaints outside the 12-month window.  This change is worthwhile, and not something the PTAB can fix independently)

3.      Representations Regarding Prosecution History – IPR
§ 315 is modified to bind a party, RPI or privy in a subsequent PTO proceeding or civil action to any representations regarding claim construction with respect to the prosecution history that were finally adopted by office in deciding the IPR.

(Assuming a Philips construction is adopted, B&B Hardware would probably do this anyway)

4.      Live Testimony – IPR
§ 316 is modified to provide a right to live testimony including cross examination of an adverse witness prior to the oral hearing if the panel finds it would “facilitate resolution of the case” because genuine issues of material fact, conflicting expert opinions, or issues of witness credibility exist.

(Language still leaves discretion to the Board.  This, like a similar proposal of the PTAB, seems directed at toning down language indicating live testimony will be rare, likely to avoid due process challenges)

5.      Claim Construction – IPR
§ 316 is modified to require claims be construed as in a civil action, i.e., apply Phillips, including construing according to the ordinary and customary meaning as understood by one of ordinary skill and prosecution history.

(As I have pointed out repeatedly, this is likely to hurt patentees more than help them)

§ 316 is further modified to require the PTO to consider previous constructions and validity determinations by a US court.

6.      Claim Amendments – IPR
§ 316 is modified to require that any proposal of one or more substitute claims:
–          Be filed in the first paper following institution and within 30 days of institution;
–          Narrow the scope of cancelled claims and add no new matter; and
–          Respond to a ground of unpatentability involved in the trial.

(The first requirement is nonsensical, and the second and third already exist.  Likewise, the PTAB is expected to issue new rules that make amendment more manageable in the coming weeks)

§ 316 is also modified to provide the petitioner a “meaningful opportunity” to file a written response addressing the above requirements and whether the substitute claim is unpatentable, which the petitioner must prove by a preponderance of the evidence.

(Not sure if this is poking a stick at the old 5 page requirement or not.  Petitioner now get a 12 page response by PTAB rules.  This is no longer needed.)

7.      Post Grant Review
All of the changes above are also made for PGR except for the rule changes for institution decision relating to the different evidentiary standard at the PTO and court, the barring of institution of “a particular claim,” and the possibility to add claims added by amended complaint.

(Keep in mind that PGR must be filed quickly after issuance, so not all of these ontrols are needed for PGR)

8.      Panels
Requiring that within one year of enactment, ensuring that the panel adjudicating the proceeding (IPR or PGR) have no more than one individual that participated in the institution decision.

(PTAB has discussed a similar change)

9.      Rule 11
Any statement, petition, or other submission to the PTO is made under an obligation substantially similar to the obligations in Rule 11 of the FRCP.

(Not sure this adds anything, submissions to the agency are already controlled by ethics rules.)

I’ll go through the House bill tomorrow.

CAFC Finds Board Has Power to Vacate Institution Decision Sua Sponte

The Patent Trial & Appeal Board (PTAB) posed the following question to the public last summer in its Request for Comments:
Real Party in Interest:
5. Should a patent owner be able to raise a challenge regarding a real party in interest at any time during a trial?

Since last summer there have been a handful of IPR proceedings vacated on RPI grounds, post-institution. At the same time, the Board expresses a strong preference that motions for additional discovery on RPI be pursued as early as possible. So, while the Board has shown a willingness to vacate post-institution for improper RPI/privity designations, evidence for advancing such a deficiency (i.e., that the petitioner has failed to name a RPI/privy in its petition) is unlikely to come through PTAB discovery—for now.

This month the Board is expected to release a new rule package responsive to the feedback from last summer’s Request for Comments. The Rules are expected to provide some enhanced ability to secure additional discovery, especially as it relates to RPI.  Given the expectation of more liberal discovery on RPI in the month’s ahead, is RPI a matter of standing that might be raised at any time, even on appeal to the CAFC?

First, the RPI requirement is expressed in a handful of IPR statutes, 35 U.S.C. § 312(a); and 35 U.S.C. § 315(a), (b) and (e).  (The PGR statutes include corresponding provisions, discussed below).

As to 312(a), this statute spells out the requirements of a petition. That is, a petition may be considered only if:
.       .       .      .
(b) the petition identifies all real parties in interest.

For a patentee to prevail under this statute, one might argue that the patentee would need to pursue its RPI argument prior to the time of institution. In other words if this statute expresses any concept of standing, it might be limited in time (i.e., preliminary proceeding only). 
 
315 (a) and (b), on the other hand, do not refer to consideration of the petition, but instead, to institution. For example, 315() provides, “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” (emphasis added) Thus, 315(b) would seem more in the vein of traditional standing concepts. 315(a) recites a similar prohibition, but prohibits a DJ action for invalidity prior to an IPR petition..

35 U.S.C. § 325(a)(1) is the equivalent of 35 U.S.C. 315(a), but specific to PGR. Last month, the CAFC considered whether or not the Board could invoke 325(a)(1) sua sponte to vacate CBM proceedings in GTNX, Inc. v. INTTRA, Inc. (CAFC 2015). In GTNX, the Board vacated the CBMs upon learning that the petitioner challenged the validity of the same patents via declaratory judgment action prior to its CBM petition filings (prohibited by 325(a)(1)). The Court, while not addressing the issue as one of “standing” held that GTNX lacked a clear and indisputable right to have the proceedings continue in the face of the proscription under § 325(a)(1). The court noted the absence of anything in the statute or regulations precluding the Board from reconsidering the institution decision, invoking § 325(a)(1) on its own, or inviting the patentee to file a motion at any time.  One would expect a corresponding analysis for 315(a) or (b).

Currently, the Board does not have any precedential decisions on RPI, or privity due to the fact specific nature of these cases. As a result, some consider this area subject to highly panel dependent. Given this type of additional discovery may become easier to secure in the months ahead, it is likely that RPI/privity will be the focus of many CAFC appeals going forward, perhaps even for the first time.

Evolution of PTAB Practice & Boardside Chat (AIA Discovery) for July

For those seeking PTAB related CLE/updates this month, there are a few upcoming options.

First, for an update and discussion on PTAB trial practice in light of new rule changes, legislative proposals, and anticipated rules, I, along with my partner Greg Gardella, will host the Strafford Legal webinar entitled: Leveraging Post-Grant Patent Proceedings Before the PTAB on July 9th (register here).

Next week, Tuesday, July 14th, the USPTO’s Patent Trial & Appeal Board (PTAB) will host its third  “Boardside Chat” lunch webinar for 2015 (postponed from June). The topic is “Discovery in AIA Trials.”  I will be participating on the the practitioner panel. (No CLE)

I hope to speak to you at one of these upcoming programs.