PTAB claim construction

Boardside Chat & Special PLI Briefing

For those seeking Patent Trial & Appeal Board (PTAB) related CLE/programming this month, the PTAB itself is hosting a Boardside Chat webinar this Thursday, Dec. 6th from noon to 1 p.m. ET.

The topic of the webinar is hearsay and authentication before the Board. Lead Judge Michael Zecher along with Judge Tom Giannetti and Judge Grace Obermann will present.  There will be a Q&A session at the end of the presentation. The webinar is free and open for everyone to attend.

Access information is available (here)

On Wednesday December 12th @ 1PM (EST) the Practicing Law Institute (PLI) hosts: Is Amending at the PTAB About to Become Even More Difficult? 

This program will explore the practical implications of recent/proposed PTAB trial practice changes such as switching claim construction standards, adopting new claim amendment procedures, and managing trial scheduling in this new environment. I hope you can join, me, and my co-panelist Rob Greene Sterne of Sterne, Kessler, Goldstein & Fox, P.L.L.C., for this timely discussion.

Register (here)

PTAB Webinars this Wednesday

The October edition of the PatentsPostGrant.com webinar series will be held this Wednesday October 24th @ 1-2PM (EST).  The October program is entitled Adapting to the New Patent Trial & Appeal Board (PTAB).  This month’s program will include special guest Jonathan Bowser, Senior Patent Counsel for Unified Patents and will explore a host of changes, trends and expected shifts in PTAB and parallel litigation strategies for both petitioners and patent owners.

Free Registration: (here)

Later that same afternoon, @ 3PM (EST), PLI will host a one hour debrief entitled: The Reinvention of the Patent Trial & Appeal Board. This program will view the current political landscape of the agency and how that may impact further changes and existing practices before the Board, as well as legislative initiatives.

Register: (here)

I hope you are able to join me at one of these upcoming programs.

Phillips Claim Construction Rule Imminent

Back in May, the USPTO issued a Notice of Proposed Rulemaking to switch from the Broadest Reasonable Interpretation (BRI) standard to a Phillips claim construction for AIA Trial Proceedings (here).  Thereafter the agency collected comments from the public, most of which favored the change, and submitted the issue to the Office of Management & Budget (OMB) for final regulatory approval. On Wednesday October 3rd the regulatory approval was given by OMB’s Office of Information & Regulatory Affairs (OIRA).  Thus, the USPTO may now publish a Final Rule Package to make the proposed switch to Phillips.

The Final Rule Package, which I expect will publish in the Federal Register next week does not take effect immediately. Rather, there will be an effective date 30-60 days after the date of publishing. Assuming publication next week, that would provide an effective date as early as the first full week of November, or as late as December. (There have been discussions that this change would be retroactive, but that is not my expectation. Too much re-work for existing proceedings, and on the heels of SAS, I just don’t see it.)  I expect that any petition filed on or after the effective date will be subject to the Phillips standard.

As I have pointed out previously, while I don’t expect this change will impact trials in a significant regard, it will impact filing strategies. That is, there will be an avalanche of petitions coming into the PTAB before the effective date. Continue Reading PTAB Rule Package Dropping BRI Clears Final Hurdle

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