Federal Circuit - Hologic v. Minerva Surgical - Assignor Estoppel Does not Bar PTAB Invalidity Decision

In Hologic v. Minerva Surgical, the Federal Circuit held assignor estoppel barred the assignor from asserting invalidity of a patent in district court, but not the assignor relying on the Federal Circuit's affirmance of PTAB invalidating claims of another patent in an inter partes review (IPR).

See further details in the opinion. One detail caught my eye as a patent attorney, Judge Stoll questioning if it is time to revisit assignor estoppel en banc (entire panel) on the construction of the America Invents Act (AIA) due to the illogical regime being perpetuated.

In the opinion on page 30:

"In Arista, we held that the judge-made doctrine of assignor estoppel does not apply in the context of an inter partes review. In other words, an assignor who sold his patent rights may file a petition for IPR challenging the validity of that patent. Arista Networks, Inc. v. Cisco System, Inc. At the same time, we continue to bar assignors from challenging in district court the validity of the patents they assigned. See, e.g., Mentor Graphics Corp.v. EVE-USA, Inc. 

Our precedent thus presents an odd situation where an assignor can circumvent the doctrine of assignor estoppel by attacking the validity of a patent claim in the Patent Office, but cannot do the same in district court. Do the principles underlying assignor estoppel—unfairness in allowing one
who profited from the sale of the patent to attack it—apply in district court but not in Patent Office proceedings?

Should we change the application of the doctrine in district court, or should we revisit our construction of the America Invents Act and reevaluate our interpretation of the statute as prohibiting the doctrine of assignor estoppel? Given the odd circumstance created in this case, I suggest that it is time for this court to consider en banc the doctrine of assignor estoppel as it applies both in district court and in the Patent Office.

We should seek to clarify this odd and seemingly illogical regime in which an assignor cannot present any invalidity defenses in district court but can present a limited set of invalidity grounds in an IPR proceeding. A petitioner in an IPR proceeding may request to cancel as unpatentable one or more claims of a patent, but “only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b)."

Copyright © 2020 Robert Moll. All rights reserved.

Supreme Court - Helsinn Healthcare S.A. v. Teva Pharmaceutical USA, Inc. - Secret Commercial Sales of Invention Can Bar Patent

In Helsinn Healthcare v. Teva Pharmaceutical, the United States Supreme Court held that a commercial sale to a third party who is required to keep the invention confidential may place the invention "on sale" under the American Invents Act.

Justice Thomas speaking for a unanimous Court stated that the "America Invents Act (AIA) bars a person from receiving a patent on an invention that was 'in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.' 35 U. S. C. §102(a)(1). This case requires us to decide whether the sale of an invention to a third party who is contractually obligated to keep the invention confidential places the invention 'on sale' within the meaning of §102(a)."

"More than 20 years ago, this Court determined that an invention was 'on sale' within the meaning of an earlier version of §102(a) when it was 'the subject of a commercial offer for sale' and 'ready for patenting.' Pfaff v. Wells Electronics, Inc., 525 U. S. 55, 67 (1998). We did not further require that the sale make the details of the invention available to the public. In light of this earlier construction, we determine that the reenactment of the phrase 'on sale' in the AIA did not alter this meaning. Accordingly, a commercial sale to a third party who is required to keep the invention confidential may place the invention 'on sale' under the AIA."

For additional commentary see Professor Ronald Mann's Opinion analysis: Justices affirm ruling that secret sales of invention bar later patent and my post America Invents Act - On Sale Bar, 35 USC 102.

Copyright © 2019 Robert Moll. All rights reserved.

Supreme Court - Helsinn Healthcare S.A. v. Teva Pharmaceutical USA, Inc. - Hearing Transcript

The United States Supreme Court held a hearing in Helsinn Healthcare v. Teva Pharmaceutical this week.

The issue: "Whether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention."

For additional details see the hearing transcript and Professor Ronald Mann's argument analysis and America Invents Act - On Sale Bar, 35 USC 102

Copyright © 2018 Robert Moll. All rights reserved.

PTAB - Results of the Post Grant Outcomes Pilot

Today, the USPTO reported on the Post Grant Outcomes Pilot, concluding it "has succeeded in making examiners aware of patents related to applications they are examining that are involved in PTAB trials, and in turn has facilitated the timely and effective examination of applications."

Chief Judge for the Patent and Trial Appeal Board (PTAB) David Ruschke and Commissioner for Patents Drew Hirschfeld stated:

"As part of the USPTO’s ongoing Enhanced Patent Quality Initiative, in April 2016 we launched the Post Grant Outcomes Pilot, focused on pending patent applications that are related to issued patents undergoing an America Invents Act (AIA) trial proceeding before the Patent Trial and Appeal Board (PTAB). We’d like to report that the Post Grant Outcomes Pilot has succeeded in making examiners aware of patents related to applications they are examining that are involved in PTAB trials, and in turn has facilitated the timely and effective examination of applications.

AIA trial proceedings contain prior art and arguments that might be highly relevant to the patentability determination of related applications currently under examination. This pilot was intended to help examiners harness the art presented during AIA trials to enhance examination of a related application, so they could reach more expeditious decisions on patentability.

During the pilot, we notified examiners via email when they had an application related to an AIA trial, and we streamlined access to the contents of the trial by pinpointing for examiners the most relevant documents. We then surveyed the examiners to gain detailed feedback.

The survey results showed that our examiners found the PTAB information—especially the initial petition (including the prior art citations), the PTAB’s institution decision, and any expert declarations—to be highly useful. We also found that 46% of the examiners referred to at least one reference cited in the AIA trial petition during the examination of their own case, either by citing it in a rejection or as pertinent prior art. If an examiner did not use or cite the prior art from the trial, it was most likely because the claims were different between the “parent” and the “child” case, the examiner disagreed with the AIA petitioner’s analysis of the prior art and/or claims, or the examiner was able to find better art.

To further facilitate the process, in August 2016 we deployed an upgrade to examiners’ desktop application viewers which allows automated access to the contents of related AIA trials, including access to the entire file, and any cited prior art.

Our next objective with regards to the post grant outcomes process is to identify examination best practices or deficiencies that we can address through additional examiner training. To accomplish this, we are currently analyzing data gathered about the AIA trials with respect to prior art searching and claim interpretation, and are also working to thoroughly analyze how PTAB trials impact related applications.

Our final objective is to provide examiners with a periodic review of post-grant outcomes focused on Supreme Court, Federal Circuit, district court, and PTAB decisions that relate to their specific technological area. It is our hope that by providing this information, examiners will gain a better understanding of the current state of the law and what happens to a patent after it leaves the USPTO.

We are dedicated to ensuring examiners have all pertinent information, especially post grant outcomes information, easily and readily available, in order to issue the highest quality patents possible and enhance patent quality overall. Based on the program’s initial results, we can already see that our examiners are benefitting, and we will continue to identify additional ways to improve our processes."

My input is the AIA trials are a significant change in the US patent system, because they invalidate more than half of challenged US patent claims. This pilot produces prior art and arguments that are communicated to examiners handling pending applications that the USPTO determines are "related" to the US patent being challenged in the PTAB trial. Considering the best prior art makes sense, but this may tilt the playing field in favor of larger companies able to finance PTAB trials. On the other hand, patent application owners may look to any patent owner's preliminary response in the PTAB trial to address that prior art.

Copyright © 2016 Robert Moll. All rights reserved.

PTAB - AIA Review Decisions Now Available Daily

Today, the USPTO notified that "PTAB AIA review decisions are now available daily at the AIA Review Decisions webpage, which displays the current and previous business day’s decisions. The reports will be updated twice a day at 11 a.m. and 4 p.m. ET and do not include Derivation proceedings."

Copyright © 2016 Robert Moll. All rights reserved.

Supreme Court - Cuozzo Speed Technologies, Inc., v. Lee - Institution of Inter Partes Review is Non-Appealable and Broadest Reasonable Interpretation of Claims is Standard

In Cuozzo Speed Technologies, LLC v. Lee, the US Supreme Court held that a decision by the Patent Trial and Appeal Board (PTAB) on whether to institute an inter partes review (IPR) is final and non-appealable in nearly all cases. The Court also held that PTAB's use of the broadest reasonable interpretation ("BRI") of a claim consistent with the specification is proper in an IPR and within the USPTO rulemaking authority given the statute leaves a gap on the claim construction standard. Given nearly all patent owners cannot enter successfully amend claims in IPR, it's shaky to say IPR is closer to prosecution than litigation, but this is the law today. Further, this Supreme Court decision maintains the status quo where US patents have become more open to invalidity attacks since passage of the America Invents Act.

Copyright © 2016 Robert Moll. All rights reserved.

Lex Machina Patent Trial and Appeal Board (PTAB) Report 2015

The Lex Machina Patent Trial and Appeal Board (PTAB) Report 2015 summarizes what is happening in the validity challenges in the USPTO America Invents Act (AIA) trials.

Copyright © 2016 Robert Moll. All rights reserved.

Crouch - AIA Patents: 20% of New Patents - Brief Comment

Professor Dennis Crouch's post: AIA Patents: 20% of New Patents includes a chart that graphically shows a steep rise in US patents that have issued under the America Invents Act (AIA). As a reminder, an AIA patent is not entitled to a filing date earlier than March 16, 2013.

I expect a rise in litigation on how 35 USC 102 should be interpreted for AIA patents given the different language of Section 102 of the AIA and given the paucity of court or PTAB decisions to date. I am not certain if the rise in AIA patents will trigger a similar rise in litigation rather than settlement on Section 102 disputes, but it seems likely.

Also see Professor Crouch's First AIA Lawsuits and my article America Invents Act, On Sale Bar, 35 USC 102.

Copyright © 2015 Robert Moll. All rights reserved.

PTAB - Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board

On August 20, 2015, the USPTO published Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board.

As stated in the Federal Register, this proposed rule would amend the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office) trial practice for inter partes (IPR), the transitional program for covered business method patents (CBM), and derivation proceedings that implemented provisions of the Leahy Smith America Invents Act (AIA) providing for trials before the Office.

Copyright © 2015 Robert Moll. All rights reserved.

PTAB - Changes to Rules for AIA Trials

In PTAB's Quick-Fixes for AIA Rules Are to Be Implemented Immediately, Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee discusses rule changes governing America Invents Act (AIA) trials before Patent and Trial and Appeal Board (PTAB):

"As to our first 'quick fix' rule package, I wish to highlight some of the improvements you can expect to see. Many of you advised us that fifteen pages for a motion to amend that includes a claim listing is not sufficient to explain adequately why the amended claims are patentable. Similarly, others noted that fifteen pages for a petitioner’s reply brief is not a commensurate number of pages to respond to a patent owner’s response. We have heard you, and we agree. One of our quick-fix changes will nearly double the number of pages for a motion to amend, granting up to twenty-five pages for the motion along with the addition of a claims appendix (with a commensurate amount of additional pages for the opposition and reply briefing).

Another change will nearly double the number of pages for a petitioner’s reply brief, granting up to twenty-five pages. Notably, even before these two changes appear in the first rule package, judges will begin implementing them through scheduling orders effective immediately.

As to our second rule package of more involved changes, we are considering proposing a number of other revisions to rules including: further modifications to the motion to amend process; adjustments to the evidence that can be provided in the patent owner preliminary response; and clarification of the claim construction standard as applied to expired patents in AIA proceedings. We also are considering several other changes, including adjustments to the scope of additional discovery, how to handle multiple proceedings before the Office involving the same patent, use of live testimony at oral hearings, and whether the parties should be required to make a certification with their filings similar to a Rule 11 certification in district court litigation.

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."

Copyright © 2015 Robert Moll. All rights reserved.

Jonathan Tamimi - Breaking Bad Patents: The Formula for Quick, Inexpensive Resolution of Patent Validity

Tonight, I recommend reading UC Berkeley law student Jonathan Tamimi's article, Breaking Bad Patents: The Formula for Quick, Inexpensive Resolution of Patent Validity. The 60-page article is quite comprehensive, and has loads of data and tables regarding the results obtained in the America Invents Act trials.

In the article: "Part I discusses the historical background of the AIA. Part II navigates the AIA’s updated and expanded procedures for reexamining patent validity at the PTO. The first section of Part II details the advantages of challenging patent validity via AIA reviews relative to district court litigation. The second section presents the limitations and potential drawbacks of using AIA reviews. The third section discusses additional considerations for potential petitioners. Part III concludes with a brief summary of issues surrounding AIA reviews."

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - PTAB AIA Trials Road Show in November 2014

Today, the USPTO sent a blog post from Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee:

"Stakeholder engagement is a critical mission of the USPTO, and I am excited to share that the Patent Trial and Appeal Board will visit the Great Lakes region to provide more training about the AIA trials. In November, the board will visit Detroit, Cleveland, Pittsburgh, Chicago, Milwaukee, and Minneapolis for afternoon, interactive programs.

Earlier this spring, the board engaged with stakeholders in a variety of cities on a listening tour to consider revisions to the AIA trial rules and guidance. In these upcoming sessions, the board is focused on teaching the public how to strengthen their AIA trial filings.

In particular, stakeholders will hear a 'State-of-the-Board' address, providing an update on recent developments including the volume of AIA trial filings and administrative patent judge hiring. The board also will host a “PTAB Feud” game show in which members of the public compete to answer questions and learn about the AIA trials. Lastly, the board has developed an AIA trial workshop involving a mock scenario in which a petitioner wishes to assert a challenge against a patent. The audience will break into teams, each facilitated by a judge, to discuss which type of petition to file and what issues might arise from both the petitioner’s and patent owner’s perspectives.

Topics of discussion will include bars to filing, real party-in-interest and joinder considerations, and claim construction. The teams likewise will decide whether to institute an AIA trial, and if so, on what grounds and for which claims. In Detroit, the PTAB will host an actual AIA trial hearing in lieu of the workshop.

Besides the roadshows, the PTAB continues to hire more talented IP practitioners as judges. In fiscal year 2014, the board brought on 44 new judges, raising the total to 214. This fiscal year, the board is eager to continue growing, both in the Alexandria headquarters as well as all our satellite office locations. If you enjoy high end legal work involving cutting edge science, then an administrative patent judge position may be just for you.

In sum, I encourage you to take part in one of the Detroit Region Roadshows so that you can become even more versed in the nuances of the AIA trials. To learn more about a judge position, please visit www.usajobs.gov. Our AIA trial proceedings help strengthen our patent system, and we're thankful for the stellar leadership demonstrated by our administrative patent judges on the PTAB."

Copyright © 2014 Robert Moll. All rights reserved.

PTAB - Guidance on Discovery in AIA Trials

The PTAB published guidance on discovery practice in America Invents Act (AIA) trials:

Message From Administrative Patent Judges Jacqueline Bonilla and Sheridan Snedden: Routine and Additional Discovery in AIA Trial Proceedings: What Is the Difference?

Briefly, the article discusses routine and additional discovery, PTAB considerations in deciding whether to grant motions for additional discovery and how to succeed on discovery motions in AIA trials.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - America Invents Act Virtual Marking & Satellite Reports

The USPTO submitted its Virtual Marking Report (September 16) and Satellite Office Report (September 29) to Congress.

As stated in the USPTO press release: "In the Virtual Marking Report, the agency addressed the effectiveness of virtually marking an article with the word "patent" or abbreviation "pat." followed by a website address where the article is associated with the relevant protective patents as an alternative to physically marking the article with the patent information. The Report also addressed whether virtual marking has limited or improved the public's access to patent information along with potential legal issues that arise from virtual marking. Lastly, the agency considered possible deficiencies in constructive notice arising from virtual marking as compared with physical marking. Information contained in the Virtual Marking Report was drawn from public input provided in response to a Federal Register Notice.

In the Satellite Office Report, the agency explained the criteria used to select the location of its four satellite offices as well as the process and timing to build out those offices. The Report also delved into the achievements of the satellite offices, including their impact on the patent application backlog and pendency, examiner recruitment and retention, and stakeholder outreach.

The PTO has one final AIA report to complete dealing with the agency's overall implementation of the AIA. That report is not due until September 2015."

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - America Invents Act First-to-Inventor to File Roadshow Fall 2014

The USPTO has started the AIA First Inventor to File Roadshow Fall 2014.

According Alexandra Roberts, Executive Director of the Franklin Pierce IP Center, "the presentation provided attendees with an invaluable opportunity to improve their understanding of recent changes in patent law, gain insight into USPTO procedure, get exposure to practical concerns in patent prosecution, and cement their new knowledge by applying it in a hands-on way."

Here are the upcoming dates:

Dallas - September 30
Denver - October 2 (also webcast from Rocky Mountain Office)
Silicon Valley - October 7
Atlanta - October 9

See AIA Roadshow for more information on the upcoming live and webcast roadshow dates, which are free on a first-come first-serve basis.

See the USPTO first inventor to  file page for the roadshow presentations after October 9, 2014.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO Hosting a Roadshow to Discuss First to File System of America Invents Act

The USPTO is hosting a nationwide roadshow to discuss the first inventor to file provisions of the America Invents Act in September - October 2014.

"The roadshow series will begin on September 16 and run through October 9, 2014, with stops in Concord, New Hampshire; Madison, Wisconsin; Dallas, Texas; Silicon Valley, California; and Atlanta, Georgia, as well as on USPTO campuses in Alexandria, Virginia, and Denver, Colorado. The roadshows in Alexandria on September 23 and Denver on October 2 will be webcast live through the USPTO website.

The roadshow events are free and open to the public. Seating is available on a first-come, first-served basis. For more information, including roadshow logistics, venues, and webcast access information, please refer to the AIA roadshow page on the USPTO website."

See USPTO press release for further details.

Copyright © 2014 Robert Moll. All rights reserved.

PriceWaterhouseCooper's 2014 Patent Litigation Study

Tonight, check out PWC's 2014 Patent Litigation Study - As case volume leaps, damages continue general decline. This study is interesting.

IP Navigator argues the explosion in patent litigation is a myth. IP Navigator's article states the study fails to support big tech's claim that patent litigation is out of control. Instead, big tech pushes the myth to pressure Congress to pass new laws that limit US patents. This makes sense as an incumbent wouldn't want strong patents held by startups. After all, it might shake up the status quo.

How do lobbyists and academics perpetuate the myth? Ignore that the increase in cases is partly due to the American Invents Act making it difficult to join multiple defendants in a single lawsuit, plus ignore that the increase in patent litigation is also due to an increase of US patent grants.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - Patent Trial and Appeal Board Update

The USPTO's Patent Public Advisory Committee held a quarterly meeting and published a Patent Trial and Appeal Board Update on August 14, 2014.

In the Update, Chief Administrative Patent Judge Mr. James Donald Smith provides 41 PowerPoint slides that describe the operation of the PTAB.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - PTAB Webinar and PowerPoint Slides on 17 Questions Related to AIA Trials

As a follow up to the article USPTO Request Public Comments on American Invents Act Covered Business Method Review, Derivation, Inter Partes Review, and Post Grant Review:

The USPTO published a webinar and PowerPoint slides on 17 questions regarding practice in America Invents Act (AIA) Trials: webinar and slide set on July 29, 2014.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO Statistics on AIA Procedures

Tonight, I was curious how many people are taking advantage of the America Invents Act (AIA) procedures such as inter partes review and preissuance submission. I started by checking on the USPTO web site, which has a page AIA statistics that gives the raw number of filings for the AIA procedures from their inception on September 16, 2012 up to June 30, 2014.

First, some AIA procedures are being increasingly used while others are ignored. For example, inter partes review is more often than not the key strategy to consider if you have been sued for patent infringement.  Thus, I expect patent infringement actions without a concurrent inter partes review to become even more rare (i.e., Concurrent court/USPTO cases are about 2/3) as defendants become aware of the benefits. In contrast, covered business method patent review filings don't appear be increasing in a big way due to the subject matter restriction, and perhaps because inter partes review is more cost effective. We don't know much about post-grant review just yet, since the first petition was just filed and we still don't have that many issued US patents filed after March 16, 2013.

As far as the other administrative procedures, preissuance submission is seeing only a modest number of filings (e.g., 100 filings is a good month!) given the number of applications pending in the USPTO. Supplemental examination has seen surprisingly little use (e.g., 7 filings per month).

Note the raw filings do not indicate they complied with US patent law and regulations.

Also see the USPTO data for the administrative trials at the PRPS Filing System.

Copyright © 2014 Robert Moll. All rights reserved.