USPTO - Trial Statistics IPR, PGR, CBM Patent Trial and Appeal Board August 2020

The USPTO monthly publishes trial statistics for IPRs, PRG, and CBM in the PTAB section of USPTO.gov. Note covered business methods (CBM) expired September 15, 2020. 

Here's the latest report: Trial Statistics IPR, PGR, CBM Patent Trial and Appeal Board August 2020

Copyright © 2020 Robert Moll. All rights reserved.

USPTO - Webinar on Updated AIA Trial Practice Guide

The USPTO's webinar on the updated AIA Trial Practice Guide is 9-10 am PT on August 8.

Here's the topics: (1) when additional discovery is granted; (2) Phillips claim construction; (3) testimonial evidence for a patent owner's preliminary response; (4) information to provide if multiple petitions are filed about same time; (5) motions to amend; (6) determining whether to grant a motion for joinder; (7) procedures when a case is remanded; and (8) procedures for requests for modifications to a default protective order.

Send questions before and during webinar: PTABBoardsideChat@uspto.gov.

The webinar access information: PTAB webinars.

Copyright © 2019 Robert Moll. All rights reserved.

USPTO - Trial Statistics IPR, PGR, CBM, Patent Trial and Appeal Board June 2019

The USPTO Trial Statistics IPR, PGR, CBM, Patent Trial and Appeal Board June 2019 gives a quick view of what's happening with validity challenges in the USPTO.

From October 1, 2012 to June 30, 2019:

• 93% petitions were filed for inter partes review (IPR), 5% for covered business methods (CBM), and 2% for post grant review (PGR) 
• Overall institution rates have decreased from 87% to 62%
• Institution rates for all technologies are about 60-70% except design at 40% 
• Technologies lacked granularity (e.g., business methods and mechanical clumped together)
• Electrical engineering & software patents are frequent targets for petitioners 
• Pre-Institution settlements rose from 9% to 18%
• Post-institution settlements fell from 90% to 28%
• Status of Petitions for instituted claims: no claims unpatentable 19%, some claims unpatentable 18%, and all claims unpatentable 63%  

The relative low cost of USPTO Trials compared to seeking declaratory relief in court, and the high institution and invalidity rates explain why defendants file petitions with a request to stay any pending court proceedings.

Copyright © 2019 Robert Moll. All rights reserved.

USPTO - AIA Trial Guide Updated in July 2019

The USPTO updated the America Invents Act (AIA) Trial Practice Guide (TPG) for attorneys practicing before the Patent Trial and Appeal Board (PTAB).

The updates include guidance on:

• "Factors that may be considered by the Board in determining when additional discovery will be granted 
• The revised claim construction standard to be used in IPR, PGR, and CBM proceedings 
• The submission of testimonial evidence with a patent owner preliminary response 
• Information to be provided by the parties if there are multiple petitions filed at or about the same time challenging the same patent
• Motion to amend practice
• Factors that may be considered by the Board in determining whether to grant a motion
• Procedures to be followed when a case is remanded
• Procedures for parties to request modifications to the default protective order"

Also see the AIA Trial Practice Web page.

Copyright © 2019 Robert Moll. All rights reserved.

USPTO - Proposes Changes to the Claim Construction in Trial Proceedings Before the Patent Trial and Appeal Board

The USPTO is proposing changes favorable to patent owners with regard to claim construction in the following Patent Office proceedings: (1) inter partes review (IPR), (2) post-grant review (PGR), and (3) the transitional program for covered business method patents (CBM) proceedings before the Patent Trial and Appeal Board (PTAB).

As stated in the regulatory notice: the USPTO "proposes to replace the broadest reasonable interpretation (“BRI”) standard for construing unexpired patent claims and proposed claims in these trial proceedings with a standard that is the same as the standard applied in federal district courts and International Trade Commission (“ITC”) proceedings. The Office also proposes to amend the rules to add that the Office will consider any prior claim construction determination concerning a term of the involved claim in a civil action, or an ITC proceeding, that is timely made of record in an IPR, PGR, or CBM proceeding."

If this change is implemented, it should be more difficult for a challenger to invalidate patent claims in certain cases, which may be reasonable given patent owners are rarely afforded the opportunity to amend claims in Patent Office proceedings to date.

See the USPTO Notice of Proposed Rule Making.

Also see U.S. Supreme Court's prior decision in Cuozzo Speed Technologies v. Lee that affirmed PTAB's use of the broadest reasonable interpretation of the claims in inter partes review.

Copyright © 2018 Robert Moll. All rights reserved.

PTAB - How to Make Successful Claim Amendments in AIA Trials

At the AIA Trials conference at Santa Clara Law school on April 29, 2014, the Patent Trial and Appeal Board (PTAB) administrative judges noted it is difficult to amend claims during an inter partes review (IPR), post-grant review (PGR), or covered business methods (CBM) review (i.e., the AIA proceedings).

Part of the problem appears to be attorneys are confusing claim amendment practice in AIA trials with that employed in patent prosecution. In prosecution of a US patent application one can freely amend a claim before the final Office action as long as the amended claim meets the requirements of 35 USC 112. Once amended, the burden shifts to the examiner to establish how the amended claim is unpatentable. In IPR, PGR, or CBM proceedings, the patent owner can only file a motion proposing to amend a claim then bears the burden to show the claim is patentable. For whatever reason, patent owners are having a difficult time meeting these two requirements and are not getting any claim amendment entered in the AIA proceedings, which can invalidate the patent claim.

For tips on how to succeed on getting amendments entered, please see USPTO Message from PTAB: How to Make Successful Claim Amendments in AIA Trial Proceedings

Updated May 22, 2014: We now have exactly one case where the motion to amend claims was permitted. Although these are relative new proceedings, the comment during the conference that "it is difficult to amend claims in an AIA trial" understates the difficulty patent owners currently face. 

Copyright © 2014 Robert Moll. All rights reserved.