Supreme Court - SAS Institute Inc. v. Iancu - PTAB Must Decide the Patentability of All The Challenged Claims

Congress created inter partes review (IPR), 35 USC 311-319, to allow a party to challenge the validity of a patent under 35 USC 102 and 103 based on prior art patents and/or publications at relatively low cost in the US Patent Office.

If the party can prove a reasonable likelihood of success of showing the invalidity of at least one claim, the USPTO should institute an IPR.

All patents are eligible for an IPR challenge, but if the patent's earliest effective filing date is on or after March 16, 2013, the IPR must be filed later of the nine month period following issuance of the patent and termination of any post-grant review.

In SAS Institute Inc. v. Iancu, the US Supreme Court addressed a practice of the USPTO to institute an IPR on part of the challenged claims. In SAS, the Supreme held when the USPTO institutes an inter partes review to consider the validity of an issued patent the USPTO must decide the patentability of all the challenged claims. In other words, if PTAB institutes an IPR, it can’t just review the claims that meet the threshold for institution, but must review all of the challenged claims.

My comment is SAS forces careful selection of the patent claims to be challenged, because a written decision that a challenged claim is patentable, may raise an estoppel against further challenge of the claim on the same grounds or grounds that could have been reasonably raised.

Copyright © 2018 Robert Moll. All rights reserved.

USPTO - PTAB Study on Motions to Amend in AIA Trials

In recent years it has been very challenging for a patent owner to amend claims during an America Invents Act (AIA) trial. The USPTO published a study that suggests this is still the case. Here's the results from a PTAB Motion Study that tracks and analyzes motions to amend filed in AIA trials up to the end of March 2018:

• "Of the 3,203 trials that have gone to completion or settled, patent owners sought to amend the claims in 305 trials.
• Of the 305 trials with motions to amend, the PTAB ultimately decided the merits of the motions in 189 trials. In the remaining 116 completed trials, the motions to amend were rendered moot because the PTAB did not find the original claims unpatentable, were not decided because the trial terminated prior to a final written decision, or were an amendment that only sought to cancel claims.
• Of the 189 motions to amend that the PTAB decided, the PTAB granted or granted-in-part 18 motions. For 160 of the 182 motions denied or denied-in-part, the PTAB determined that proposed amended claims did not satisfy at least one statutory requirement of patentability akin to an examiner rejecting a proposed amended claim because it is anticipated, obvious, not adequately described in the written description, indefinite, or directed to non-statutory subject matter or found that the patent owner failed to satisfy the statutory requirements for a motion to amend under 35 U.S.C. 316(d). For the remaining 22 motions, the PTAB denied on procedural grounds related to the regulatory requirements for a motion to amend.
• As of the midpoint of FY 2018, patent owners had filed more motions to amend than in recent fiscal years."

For more details see the Motion to Amend Study Update under the PTAB Statistics.

Copyright © 2018 Robert Moll. All rights reserved.

USPTO - Update AIA Patent Trial Practice Guide (August 2018)

In August 2012, the USPTO published Office Patent Trial Practice Guide (the Guide) for 37 C.F.R. Part 42 (Part 42 is currently on pages 416-447). The Guide was intended to give guidance to parties participating in inter partes review, post-grant review, covered business methods, and derivation under the America Invent Act (AIA) that had just passed.

In August 2018, the USPTO published Trial Practice Guide Update (August 2018) to update the Guide on topics such as expert testimony, motion practice, institution of trial, reply to patent owner response, reply to motion to amend, challenging admissibility, motions to exclude and strike, and oral hearings.

Copyright © 2018 Robert Moll. All rights reserved.

Wired - Despite Pledging Openness, Companies Rush to Patent AI Tech

If you are considering patenting artificial intelligence (AI) software, you are not alone. See Wired Despite Pledging Openness, Companies Rush to Patent AI Tech.

My comment on the article. I don't think a company's decision to patent AI is inconsistent with maintaining openness of its AI platforms. A company may disclose a platform so others can build on it yet reasonably expect IP protection of other advances that distinguish them from competitors. In software we look to trade secret, patenting, and copyright for legal protection. If a company elects to rely on trade secret, it prevents others from being aware of that information. So again how would clamping down on AI patents and pushing companies toward trade secret, help advance AI research? I don't think the article addresses my question, but it might inform some that AI patenting has increased greatly in the USPTO.

Copyright © 2018 Robert Moll. All rights reserved.