PTAB - Ex parte Desjardins - Appeals Review Panel Reverses Board's Rejection of AI Claims as Ineligible under 35 USC 101

Today, the USPTO designated Ex parte Desjardins precedential. In that case, the Appeals Review Panel (ARP) reversed the Board’s new ground of rejection under 35 U.S.C. §101 after determining the claims were directed at improvements in artificial intelligence (AI) technology. 

The USPTO noted, "The ARP decision explains that the claims are patent-eligible, pointing to the Federal Circuit’s Enfish decision, which observes that many advancements in computer technology, “by their very nature, may not be defined by particular physical features but rather by logical structures and processes.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). The ARP decision further explains that the claims at issue stand rejected under § 103, demonstrating that §§ 102, 103, and 112 are the traditional and appropriate tools to limit patent protection to its proper scope."

Copyright © 2025 Robert Moll. All rights reserved. 

PTAB - Patent Trial and Appeal Board Hearings Held in Person Absent Good Cause

Today, the USPTO announced:

"Patent Trial and Appeal Board (PTAB) hearings will be held in person. All parties will be expected to appear in person for hearings absent a showing of good cause. Good cause will generally be limited to circumstances such as financial hardship, medical emergencies, or other comparable obstacles to in-person attendance.

For all hearings scheduled on or after September 1:

• A party may request to appear virtually for good cause.
• The fact that one party is permitted to appear virtually does not establish good cause for other parties to do the same.
• Hearings will be held at one of USPTO’s offices, and parties may request a specific office location for their hearing. PTAB will attempt to accommodate such requests.  
• Remote attendance will continue to be available to the public.
• To access a hearing virtually or in person, submit a request to PTABHearings@uspto.gov at least three business days before the hearing.

For more information, visit the PTAB hearings webpage, contact PTABHearings@uspto.gov, or call 571-272-9797."

Parties will soon get to "discuss" site of hearing (e.g., Alexandria, VA v. San Jose, CA).

Copyright © 2025 Robert Moll. All rights reserved. 

US Supreme Court - High Court Denies Intel Bid to Nix Patent Office’s Fintiv Rule

Michael Shapiro's Bloomberg Law article High Court Denies Intel Bid to Nix Patent Office’s Fintiv Rule is worth reading. It discusses the US Supreme Court's decision to not hear Intel's petition to challenge to the Fintive rule that gives PTAB judges discretion in an inter partes review (IPR) to not institute a patent validity challenge even when the IPR is filed within one year of complaint service if the parallel litigation is at "an advanced stage" in district court. This is a favorable decision for patent owners, since invalidity rates are higher in an IPR than in court.

Copyright © 2024 Robert Moll. All rights reserved.

USPTO - PTAB’s Motion to Amend Pilot Program

Today, the USPTO Blog (Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and Scott Boalick, Chief Judge of the Patent Trial and Appeal Board of the USPTO) stated the PTAB's Motion to Amend Pilot Program shows promising results:

"On March 15, 2019, the USPTO implemented a pilot program for motions to amend (MTAs) in AIA trials before the PTAB. In MTAs, patent owners may request to cancel challenged claims or propose substitute claims to replace challenged claims if they are found unpatentable. We have seen promising results for claim amendments made under this pilot program and want to share these with you.

Under the pilot program, a patent owner has two new options. First, the patent owner can request preliminary guidance from the Board on its MTA. Second, the patent owner may file a revised MTA in response to preliminary guidance (if requested) or to the petitioner’s opposition. In short, by providing for guidance and an opportunity to revise the MTA, the pilot program provides for back and forth between the Board and the patent owner that did not previously exist.

If a patent owner requests preliminary guidance, the Board will provide feedback on the statutory and regulatory requirements for an MTA, as well as on patentability of the proposed substitute claims based on the record at that time. The patent owner may then file a revised MTA in response to the preliminary guidance. Alternatively, if the patent owner does not request preliminary guidance, it may file a revised MTA in response to the petitioner’s opposition to the original MTA. Notably, if a patent owner does not choose either pilot option, then the MTA proceeds under effectively the same practice as before implementation of the pilot program.

The pilot program applies to all AIA trials instituted on or after March 15, 2019, and patent owners could start filing MTAs under the program in June of 2019. Between June 1, 2019 and September 30, 2020, patent owners requested preliminary guidance in 76% of MTAs, or 78 out of 102 MTAs. Thereafter, 79% of patent owners filed a revised MTA.  From April 1, 2020 through September 30, 2020, the PTAB issued 31 Final Written Decisions addressing pilot-eligible MTAs. So far, the pilot program options are being used in the vast majority of MTAs. Moreover, early results suggest that patent owners who chose at least one of the pilot program options are more likely to have their MTAs granted for at least one proposed substitute claim as compared to MTAs that do not use the pilot program options. 

Specifically, out of the 31 Final Written Decisions with MTAs that were eligible for the pilot program, 22 elected at least one of the pilot program options. And out of the 22 MTAs in which patent owners elected at least one pilot program option, 36% had at least one proposed substitute claim granted. By contrast, of the nine MTAs where patent owners did not elect either pilot program option only 11% had at least one proposed substitute claim granted. Before the pilot program, only about 14% of MTAs had at least one proposed substitute claim granted. 

The USPTO implemented the MTA pilot program with the goal of providing a more robust amendment practice in AIA trials, in a manner that is fair and balanced for all parties and stakeholders. Through this practice, the aim is to ensure that patent owners have viable opportunities to amend claims challenged by third parties. Preliminary data indicates that the pilot program is working as intended."

Copyright © 2020 Robert Moll. All rights reserved.

Federal Circuit - Network-1 Technologies, Inc. v. Hewlett Packard - Joining Party Can Challenge Validity On Different Grounds Than Raised in IPR

In Network-1 Technologies, Inc. v. Hewlett Packard, the Federal Circuit held that a party joining an inter partes review (IPR) before Patent Trial and Appeal Board (PTAB) can later challenge patent validity in court as long the challenge is based on different grounds than those raised earlier in the IPR. 

As a reminder, 35 U.S.C. § 315(e) estops a petitioner from challenging patent claims in court on grounds it "raised or reasonable could have raised" after a final decision in an IPR. The Federal Circuit explained a joining party is not estopped from raising grounds different than those when the IPR was instituted. In short, a party is only estopped from challenging in court on the grounds it "raised or reasonably could have raised" in the IPR.

Copyright © 2020 Robert Moll. All rights reserved.

RPX - The PTAB Sees a Relatively Small Percentage of Patents Litigated in District Court - Comment

On September 16, RPX published a short article: The PTAB Sees a Relatively Small Percentage of Patents Litigated in District Court September 16, 2020. It noted that only 22% of the court cases also see an inter partes review (IPR). Thus, the RPX report might give some patent owners a nice feeling: you probably won't face an IPR where more than half of US patents see claims invalidated. 

But think about it. If RPX is correct that IPRs have only been filed against 4,330 patents since available in 2012, while the USPTO reports 11,148 IPR petitions filed from beginning (Sept. 16, 2012) until recently (Aug. 31, 2020), we have a difference. Let's assume both RPX and the USPTO are correct. Why the difference? I am thinking the difference is attributable to the current practice of filing multiple petitions against certain patents. Many patent may escape an IPR, but for valuable patents, it's "war by attrition."

Copyright © 2020 Robert Moll. All rights reserved.

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.

IP Watchdog Annual 11-day Free Virtual IP law conference (September 1-30)

Gene Quinn's IP Watchdog Annual Meeting 11-day virtual conference (September 1-30) with IP law speakers starts at 9 AM (PT) tomorrow: IP Watchdog free registration page.

Copyright © 2020 Robert Moll. All rights reserved.

USPTO - Use of Admitted Prior Art in a Petition for Inter Partes Review

On August 18, 2020, the USPTO issued a Guidance Memorandum to the Patent Trial and Appeal Board (PTAB) regarding reliance on applicant admitted prior art in a petition for inter partes review.

The USPTO stated: "the memorandum, issued under the Director’s authority to set forth binding agency guidance, provides the office’s interpretation of 35 U.S.C. § 311(b) that the basis for an inter partes review (IPR) must be a prior art patent or printed publication, and that statements regarding prior art in the challenged patent therefore cannot serve as the basis for instituting an IPR. Such statements, however, may provide evidence of the general knowledge possessed by a person of ordinary skill in the art, and may be used to support an obviousness argument in conjunction with one or more prior art patents or printed publications."

Thus, the USPTO memo states IPR challengers cannot ground a petition solely in applicant's admissions in the specification, but can use them to support obviousness along with prior art.

This is uncontroversial, but it reminds how you write a US patent application. The popular Pressman, Patent It Yourself (2018) states that "applicants should indicate the problems of the prior art, if any, and describe and knock all prior art" under the heading Background - Prior Art. However, this is not good advice, a big job, and in my view unnecessary. Instead, it is best to avoid risk of a prior admission in describing and knocking all prior art, especially when the USPTO only requires applicants and attorneys disclose prior art they are aware of that is material to patentability in an information disclosure statement for consideration by the examiner.

Copyright © 2020 Robert Moll. All rights reserved.

Federal Circuit - Uniloc 2017 LLC v. Hulu LLC - PTAB May Review Proposed Substitute Claims for Patent Eligibility in IPR

In Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit affirmed PTAB's determination that the patent owner's substitute claims proposed in a motion to amend were patent ineligible under 35 U.S.C. § 101 in an inter partes review (IPR).

As a reminder, IPR only permits challenges of US patent claims based on prior literature under 35 U.S.C. § 102 and 35 U.S.C. § 103. However, the Federal Circuit is now making a distinction with issued and substitute claims proposed in an IPR and states that PTAB may review substitute claims proposed by the patent owner for patent eligibility.

The dissent stated: "the majority breathes life into a dead patent and uses the zombie it has created as a means to dramatically expand the scope of inter partes review (“IPR”) proceedings. Because the Patent Trial and Appeal Board (“Board”) is estopped from issuing substitute claims in place of the invalidated claims of U.S. Patent No. 8,566,960 ("'960 patent") and because, even if the Board could issue such claims, it would be improper for it to consider 35 U.S.C. § 101."

Copyright © 2020 Robert Moll. All rights reserved.

USPTO - PTAB Motion to Amend Study Updated

The USPTO released an update to the PTAB Motion to Amend Study today.

It seems the data on motions to amend filed under the pilot program is insufficient at this stage to support it is less than a challenge to amend patent claims in PTAB trials.

Here's the USPTO summary:

"The Patent Trial and Appeal Board (PTAB) has published the sixth installment of its Motion to Amend Study. The study tracks and analyzes all motions to amend filed in America Invents Act trials, including pilot motions, through the end of March 2020.

This installment completes the data on all motions to amend filed before the effective date of the New Pilot Program Concerning Motion to Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board (84 FR 9497).

Highlights from the installment include:

• Some limited data on motions to amend filed under the motion to amend pilot program that the office implemented for cases instituted on or after March 15, 2019.

• Of the 5,359 trials that have gone to completion or settled, patent owners sought to amend the claims in 562 trials—504 pre-pilot program trials and 58 pilot program trials.

• Of the 504 trials with pre-pilot motions to amend, the PTAB decided the merits of 335 motions. In the remaining 170 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 contained an amendment that only sought to cancel claims.

• Of the 335 pre-pilot motions to amend that the PTAB decided, the PTAB granted or granted-in-part 46 motions. For 92% of the 289 motions denied or denied-in-part, the PTAB determined that the 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) or 326(d).

• For the limited number of motions to amend filed under the pilot program and included in the study, patent owners requested preliminary guidance in 83% of motions and filed a revised motion to amend in 58% of trials after receiving preliminary guidance (when taking into account cases that terminated, cases in which the motion to amend was withdrawn, or cases in which the deadline to file a revised motion to amend had not yet passed)."

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.

Federal Circuit - Facebook v. Windy City Innovations LLC - No Same-Party Joinder In Inter Partes Review

In Facebook v. Windy City Innovations LLC, the Federal Circuit held that 35 U.S.C. § 315(c) does not authorize same-party joinder, and does not authorize joinder of new issues (e.g., for cancellation), including issues that would otherwise be time-barred under 35 U.S.C. § 315(b) from inter partes review (IPR).

Unless Federal courts require infringement contentions well within one year of the service of an infringement complaint, this seems to increase legal fees for effective IPR petitions and increase the value of US patents with diverse claims.

See Bloomberg Law Patent Challengers Reassess Strategies After Ruling Bars Tactic.

Copyright © 2020 Robert Moll. All rights reserved.

Supreme Court - Thyrv, Inc. v. Click-to-Call Technologies, LP - No Appeal from PTAB's One Year Time Bar Decision on IPR

In Thyrv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court held that a Patent Trial and Appeal Board (PTAB) determination on whether a petition is filed timely for inter partes review (IPR) is not appealable.

As background, an IPR permits a petitioner to request the review the validity of claims in view of written prior art. To institute the review, PTAB must find that the petitioner is likely to succeed with respect to at least one claim and the petition was timely filed (within one year of service of an infringement complaint).

In other words, the Supreme Court states 35 USC § 314(a) permits the patent owner no appeal to the Federal Circuit from an incorrect PTAB decision that a petition was timely filed as required in 35 USC § 315(b). Note in this case the infringement complaint (dismissed without prejudice) was filed 12 years before the IPR petition!

Thus, a patent owner must make every effort to win on the merits of the institution decision and the untimeliness of the petition before PTAB. On the other hand, if the IPR is instituted, the patent owner can still appeal a final decision of invalidity to the Federal Circuit.

Copyright © 2020 Robert Moll. All rights reserved.

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.

Intellectual Asset Management (IAM) - Post Issuance PTAB Proceedings and IPR Petitions Filed Decrease from 2018 to 2019

Intellectual Asset Management (IAM) notes the sharp decrease in petitions filed for inter partes review (IPR):

"One of the standout US patent trends from last year, at least in terms of disputes, was the drop in new petition filings at the Patent Trial and Appeal Board (PTAB). Overall, according to Lex Machina, the number of post-issuance proceedings fell from 1,720 to 1,322, with the number of new inter partes reviews decreasing to 1,271 from 1,608 in 2018."

Note complaints filed for patent infringement in 2019 remained mostly steady, so the drop in IPRs filed may be due to the effectiveness of asserting patent ineligibility under 35 USC § 101, which cannot be raised as a ground of invalidity in an IPR.

In addition, IPRs filed in parallel with patent litigation may have decreased due to the Supreme Court's SAS decision which required PTAB to stop its partial institution practice. After SAS, PTAB was required to consider all grounds of invalidity in an IPR. If the IPR was not instituted, the patent owner was sure to inform a jury of that failure to prove invalidity. And if the IPR was instituted, and PTAB upheld validity of any patent claim, again jury heard it and the real party in interest would be estopped from raising the same grounds or grounds that could have been reasonable raised again in court. Finally, the USPTO policy changes and PTAB's reduced IPR institution rates are factors.

Copyright © 2020 Robert Moll. All rights reserved.

USPTO - New Toolkit for those new to PTAB Proceedings

Today, the USPTO announced a Toolkit for those new to Patent Trial and Appeal Board (PTAB) proceedings:

"We are committed to expanding resources available to individual inventors, small businesses, and those new to or with limited experience with the patenting process. As part of that effort, PTAB has prepared a New to PTAB toolkit available on the PTAB webpage of the USPTO website.

The toolkit contains a wide variety of information about the Board and its proceedings. For example, the toolkit walks through the basics of how to file an ex parte appeal to seek review of a final rejection made by an examiner. The toolkit also details the various steps involved in post-grant proceedings, such as an inter partes review, and what options the parties have at each step to make their case. Additionally, the toolkit features videos and frequently asked questions including how to prepare for and present arguments at an oral hearing. Best of all, the toolkit provides points of contact for follow-up questions.

Check out the New to PTAB toolkit today. If you have suggestions on additional resources that we can make available regarding PTAB proceedings, please email us at trials@uspto.gov."

Copyright © 2020 Robert Moll. All rights reserved.

PTAB - Consolidated AIA Trial Practice Guide November 2019

On November 20, 2019, the USPTO published the consolidated edition including the 2018-2019 updates and the original America Invents Act (AIA) Trial Practice Guide of 2012:

• Consolidated Trial Practice Guide November 2019
• Trial Practice Guide July 2019 update
• Trial Practice Guide August 2018 update
• Trial Practice Guide August 2012

For additional information see the PTAB home page.

Copyright © 2019 Robert Moll. All rights reserved.

PTAB - Proposed Rules on Burden of Persuasion on Motions to Amend Claims

Today, the USPTO published a Notice of Proposed Rulemaking (NPRM) concerning burdens of persuasion on motions to amend claims in trials (e.g., inter partes review) before the Patent Trial and Appeal Board (PTAB).

It proposes a petitioner challenging a patent bear the burden to show unpatentability of substitute claims proposed in the motion and the patent owner bear the burden to show that a motion complies with rules and the statutory requirements. Further PTAB can determine the patentability of the substitute claims based on the record. Note this proposed rule is favorable to patent owners.

The USPTO invites public comments on the rule by December 23, 2019.

Copyright © 2019 Robert Moll. All rights reserved.

PTAB - Webinar Changes to PTAB Practice and Procedures in 2019

The USPTO is holding a free webinar on changes to PTAB practice and procedure. It is scheduled from noon to 1 pm ET on October 10, 2019: 

"We will review all the improvements to ex parte appeal and AIA trial procedures that have been made over the past fiscal year. These changes include a Motion to Amend pilot program, new update to the Trial Practice Guide, establishment of a revised process to issue precedent, and release of several new informative and precedential decisions. Chief Judge Scott Boalick, Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Tim Fink, and Lead Judge Kal Deshpande will present during this webinar.

The webinar is free and open to all. There will be a Q&A session at the end of the presentation, so please send questions in advance or during the webinar to PTABBoardsideChat@uspto.gov.

More information, including the webinar access information, is available on the PTAB Boardside Chat webpage"

Copyright © 2019 Robert Moll. All rights reserved.