RPX - Infringement Is the Top District Court Issue Appealed to the Federal Circuit

RPX published a nice summary on what US patent issues are appealed to the Federal Circuit:

"RPX data on the Federal Circuit show that infringement is the most common issue appealed from district court patent cases, appearing in over 450 appeals. Claim construction and invalidity (under Sections 102/103/112) are the next two most frequent issues, each of which appears in over 300 appeals. Two other key issues round out the top five: damages/fees/costs (appearing in around 275 appeals) and invalidity under Alice/Section 101 (just over 240 appeals)."

Note the low reversal rates of many issues appealed point to the importance of winning at trial. As Judge Rich might say, "the name of the game is the claim."

For more detail: RPX Infringement Is the Top District Court Issue Appealed to the Federal Circuit

Copyright © 2020 Robert Moll. All rights reserved.

USPTO - Fast-Track Appeals Pilot Program - Decision within Six Months?

The USPTO announced a program to expedite decision for patent applications on appeal.

From the Federal Register:

"The United States Patent and Trademark Office (USPTO) is initiating the Fast-Track Appeals Pilot Program to provide for the advancement of applications out of turn in ex parte appeals before the Patent Trial and Appeal Board (PTAB). An appellant who has filed an ex parte appeal and received a notice that the appeal has been docketed may file a petition, accompanied by a petition fee, to expedite the review of his or her appeal. The Fast-Track Appeals Pilot Program sets a target of reaching a decision on the ex parte appeal within six months from the date an appeal is entered into the Pilot Program."

"The Fast-Track Appeals Pilot Program is offered on a temporary basis, and petitions to request inclusion of an ex parte appeal in the Pilot Program will be accepted until 500 appeals have been accorded fast-track status under the program, or until July 2, 2021, whichever occurs earlier. The USPTO may extend the Fast-Track Appeals Pilot Program (with or without modification) on either a temporary or a permanent basis, or may discontinue the program for either insufficient usage or after July 2, 2021."

For more details see the Federal Register Notice.

Copyright © 2020 Robert Moll. All rights reserved.

PTAB - Appeals from Reexamination and from Examiner's Final Rejection - Webinar - Feb 2

The Patent Trial and Appeal Board (PTAB) is hosting a webinar on appeals from noon to 1 pm ET Tuesday, February 2, 2016.

It will discuss appeal practice from reexamination and from an examiner's final rejection.

Lead Judge Jeff Robertson and Judge Rae Lynn Guest will present and answer questions.

Webinar access information is below. https://uspto-events.webex.com/uspto-events/onstage/g.php?MTID=e792aa46e57a99d03d7945c393232401e

Event number: 994 178 459

Event password: 123456

Audio conference:

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

Access code: 994 178 459

Captions Link: http://www.captionedtext.com/client/embed.aspx?EventID=2839520

Copyright © 2016 Robert Moll. All rights reserved.

PTAB - Responding to New Grounds of Rejection on Appeal

The PTAB has published an article that provides guidance on responding to new grounds of rejection on appeal. The article reviews PTAB rules for responding to new grounds in an examiner's answer, undesignated new grounds, and tolling for filing a reply while awaiting a decision on a petition for review of the examiner's answer.

Copyright © 2015 Robert Moll. All rights reserved.

PTAB - Streamlined, Expedited Patent Appeal Pilot for Small and Micro Entities

The Patent Trial and Appeal Board (PTAB) notified of an interesting pilot program that may be useful if you are a small or micro entity facing an appeal.

"The PTAB is pleased to announce a second pilot program that will allow small or micro entity appellants with only a single ex parte appeal pending before the Patent Trial and Appeal Board (Board) to expedite review of that appeal in return for agreeing to streamline the appeal. Specifically, the appeal must not involve any claim subject to a rejection under 35 U.S.C. § 112, and the appellant must agree to the disposition of all claims subject to each ground of rejection as a single group and waive any request for an oral hearing.

The Streamlined, Expedited Patent Appeal Pilot for Small Entities will allow small or micro entity appellants who streamline their appeals to have greater control over the priority with which their appeals are decided. The streamlining of appeals under this pilot will also assist the Board to more efficiently reduce the overall inventory of appeals pending before the Board.

Appellants wishing to participate in the pilot program need only make a certification and file a petition to the Chief Judge under 37 C.F.R. § 41.3. The Office has waived the petition fee and provided a form-fillable PDF (Form PTO/SB/441) for use in filing the certification and petition. For more information about the pilot program and how to participate, please refer to the Federal Register notice at https://www.federalregister.gov/articles/2015/09/15/2015-23090/streamlined-expedited-patent-appeal-pilot-for-small-entities

PTAB also notified it "has recently published statistics on the Expedited Patent Appeal Pilot program on its Web page at http://www.uspto.gov/sites/default/files/documents/Expedited%20Patent%20Appeal%20Pilot%20ending%2020150909.pdf.

The statistics show that petitions filed under the Expedited Patent Appeal Pilot program are being decided in an average of two days from the date of filing and that decisions on appeals accorded special status under this program currently are issued in an average of one month from the date of grant of the petition."

If you meet the requirements, the PTAB is suggesting you may get an appeal decision in about one month based on the statistics. Yes, appellant must agree to the disposition of all claims subject to each ground of rejection as a single group" and "waive any request for an oral hearing," but if you are willing to do that, meet all requirements, and need a quick decision it sounds useful. A caveat if many people use this procedure -- will the "one month to decision" promise hold?

Copyright © 2015 Robert Moll. All rights reserved.

Professor Dennis Crouch - A Few Problems at PTAB

Professor Dennis Crouch has an interesting article on problems at the Patent Trial and Appeal Board (PTAB). See A Few Problems at PTAB. Among other things the article discusses the ballooning backlog of ex parte appeals before PTAB. Professor Crouch notes "In 2006, there were fewer than 1,000 pending ex parte appeals at any given time. That figure steadily and rapidly ballooned to a seeming high-point of over 25,000 pending ex parte appeals."

Despite the fact administrative judges must also handle AIA Trials, this ballooning backlog of ex parte appeals is startling. Professor Crouch states the ex parte appeals face a three-year delay to get a decision. Of course, this is why many applicants file a request for continued examination (RCE) rather than appeal. Note 46% of all applications are based on RCE's today.   

Copyright © 2014 Robert Moll. All rights reserved.

In re Adler - What's Required to Establish the Board Has Set Forth a New Ground of Rejection

In re Adler should remind that the Federal Circuit will require strict compliance with the USPTO rules and regulations to support the argument the Board has raised a new ground of rejection requiring a rehearing or reopening of prosecution.

The appellants were looking to reverse the Board's decision that upheld an examiner's rejection of all of the claims of U.S. Application No. 10/097,096 (the '096 application) as obvious over several references.

To understand the rejections let's review representative claim 57:

57.  A method for displaying in-vivo information, the method comprising:
receiving at a data processor data generated by a swallowable in-vivo device traversing a GI tract, the data comprising a set of in-vivo images of the GI tract;
the data processor comparing values of the received images to a reference value of blood and to a reference value of healthy tissue;
the data processor causing to be displayed the images as a color video; and
the data processor further, based on the comparison, causing to be displayed an indication of the position in the GI tract of a change in the level of red color content, the change correlating to the presence of blood.

As to claim 57, the examiner found Meron disclosed a capsule that moves through the GI tract to generate a map of the GI tract but conceded Meron didn't disclose detecting the presence of blood.

On the other hand, the examiner found that Hirata taught factors of esophageal variceal rupture by use of image processing with a video endoscope. Hirata was also held to teach "bleeders" and "non-bleeders" were compared "in terms of endoscopic findings and the image processing data, especially variceal color tone and red color sign." The red color signs were classified by degree, with a minor degree indicating a reference of healthy tissue and a major degree indicating a reference of blood.

Thus, the examiner stated it would have been obvious to one of ordinary skill in the art at the time the invention was made to incorporate a processor for the colorimetric analysis of video endoscopic data, as taught by Hirata, in order to determine the presence of blood. The examiner reasoned that it would have been obvious because Hirata provides the specifics to complete Meron's disclosure that it is capable of determining the presence of blood.

Adler argued to the Federal Circuit that the Board relied upon a new ground of rejection not relied upon by the examiner, it should be entitled to reopen prosecution or to request a rehearing. 37 C.F.R. § 41.50(b).

The Federal Circuit disagreed. It stated the thrust of the Board’s rejection changes when it finds facts not found by the examiner regarding the differences between the prior art and the claimed invention, and these facts are the principal evidence upon which the Board’s rejection was based. The ultimate criterion of whether a rejection is considered new in a Board decision is whether applicants had fair opportunity to react to the thrust of the rejection.

Adler failed to meet the USPTO rules: (1) it didn't point to specific facts found by the Board but not by the examiner; (2) it didn't show how any such facts formed the basis of the Board’s rejection; and (3) it had a fair opportunity to respond, and in fact did respond to the thrust of the examiner’s basis for rejecting the claims before the Board.

The Federal Circuit noted Adler's case differed from those cited by Adler where the Board made new factual findings that the applicants did not have an opportunity to address the rejection. It also noted a Board’s explanation may go into more detail than the examiner but this does not amount to a new ground of rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).

Thus, the Federal Circuit affirmed the Board did not rely on new grounds for rejection.

Copyright © 2013 Robert Moll. All rights reserved.

Kappos v. Hyatt - 35 USC § 145 Proceedings Allow New Evidence Beyond Record in PTO

In Kappos v. Hyattt, 132 S.Ct. 1690 (2012), the Supreme Court gave a favorable standard for patent appellants that need to introduce evidence after losing on appeal to the Board of Patent Appeals and Interferences (Board).

If the Board affirms the examiner's rejections under 35 USC  §131 a patent applicant has two options: (1) a direct appeal to the Federal Circuit under 35 USC §141; or (2) an action against the PTO Director in federal district court under 35 USC §145. One can also abandon the application or file a continuation, but one unwilling to narrow the rejected claims in the continuation should not expect much.

Harold Wegner notes that a direct appeal to the Federal Circuit is a long shot, because an appellant will not be able to challenge the facts if there is "substantial evidence" to support the facts, which means the Federal Circuit will not reverse the Board’s decision on facts if a reasonable mind might accept the evidence as adequate to support a conclusion. For example, this standard would apply to the Board's factual findings underlying a legal conclusion of obviousness.

In Kappos v. Hyatt, the Supreme Court found no limits on applicants ability to introduce new evidence in a 35 USC § 145 proceeding beyond the limits set forth in the Federal Rules of Evidence and the Federal Rules of Civil Procedure. Further, Supreme Court held if new evidence is presented on a question of fact, the district court must make de novo (i.e., anew) findings that consider the new evidence and the USPTO record.

Companies are stretching to keep legal costs low. The majority had reasoned that "purposely concealed evidence" in the PTO was unlikely since it would undermine the case. However, given today's tight budgets, some may want seek to not file all of the favorable evidence such as that contained in declarations to avoid the expense and risk. However, holding back some favorable evidence may risk some court holding it was "purposely concealing evidence" rather than "reasonable management of legal costs" and that the evidence should not have been admitted by the district court.

In the past, appellants rarely filed a 35 USC § 145 action. Instead, most appealed directly to the Federal Circuit. Now I expect Kappos v. Hyatt will encourage more to file a 35 USC 145 action when (1) a continuation is unlikely to result in claim coverage that properly protects the invention, and (2) appellants need to introduce new evidence in the record in support of patentability.

Finally, I should note those losing an AIA post-grant proceeding at the Board will need to appeal directly to the Federal Circuit and will not be allowed to file a 35 USC § 145 actions

Copyright © 2012 Robert Moll. All rights reserved.

Board of Patent Appeals Backlog Enormous and Growing

On May 3, 2012, Director Kappos noted that the Board of Patent Appeals and Interferences (BPAI) has a large backlog of ex parte appeals. How large? In April 2012, Chief Administrative Judge Smith gave a presentation with slides at the AIPLA Spring Conference that indicates the growing backlog is over 30,000 cases.

The USPTO has made various attempts to attack the enormous backlog. In December 2011, Chief Judge Smith proposed various ways to streamline the appeals process in a blog post here but the backlog continues to grow. In the AIPLA presentation in April 2012, Chief Administrative Judge Smith suggests per curiam decisions and hiring more administrative judges would help.

Hiring more administrative judges, streamlining the appeal process, and per curiam decisions will help, but to really reduce the backlog the USPTO must increase the quality of initial examination. One way to increase quality is to liberally encourage PTO interviews. Interviews to discuss concrete detailed proposed amendments and replies are the best way to identify issues, reach a mutual understanding, and proceed on how to claim an  invention with respect to the prior art. Examiners should initiate interviews and never refuse a request for an interview even after a final Office action. One reason applicants appeal is they have grown frustrated with a revolving door of prior art rejections, i.e., a paper exchange that goes round and round and is even at times sustained by some examiner's desires to get another RCE on their docket. Until we address this type of  problem in examination, the appeal backlog is not going away.

This is not to suggest every application interviewed contains patentable subject matter and should result in a patent. Instead, the result should be that applicants and examiner understand what claims, if any, are patentable. And examination should end with a mutual understanding that nothing further would be gained by an appeal to the Board. Reaching a mutual understanding requires listening to someone with contrary views. It is difficult work, but I don't see how to avoid it. We don't need to hire more administrative judges or examiners, but retain and hire better examiners and administrative judges, who can rapidly assimilate the technology, the legal arguments and are paid sufficiently that they can make a career at the PTO. If we retain the best examiners, we will see the backlog reduced. And everyone should benefit from their experience. Otherwise, we accept that some of the best examiners opt to leave for law firms after working a few years at the PTO, that we have large backlog at the examination which includes 42% RCEs, and that we have an appeal backlog of about 30,000 cases.

On September 16, 2012, the America Invents Act (AIA) will add new post-grant procedures to the ex parte appeal workload being handled by the BPAI (later the Patent Trial and Appeal Board (PTAB)). Thus, the PTO needs to turn this around in the next six months to avoid further growth of the appeal backlog.

Copyright © 2012 Robert Moll. All rights reserved.