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.

Supreme Court - Oil States Energy Services, LLC v. Greene's Energy Group, LLC - Inter Partes Review Not Unconstitutional

In Oil States Energy Services, LLC v. Greene's Energy Group, LLC, the Supreme Court considered "whether inter partes review- an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents- violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury."

The Supreme Court held that Inter Partes Review (IPR) proceedings (35 U.S.C. 311-319) before the Patent Trial and Appeal Board (PTAB) do not violate Article III or the Seventh Amendment of the Constitution. In short, Justice Thomas for seven of the justices reasoned that "the decision to grant a patent is matter involving public rights" and "inter partes review is simply a reconsideration of that grant ... Congress has permissibly reserved the PTO's authority to conduct that reconsideration."

Many commentators predicted inter partes review (IPR) would be held constitutional. A more tricky prediction is how much the USPTO's new regulations and policies will level the IPR playing field for patent owners in the future.

Copyright © 2018 Robert Moll. All rights reserved.

PTAB - Global Tel*Link Corp. v. Securus Technologies - Covered Business Method Challenge Terminated Since Patent Not Related to Financial Product or Service

In Global Tel*Link Corp v. Securus Technologies, the Patent Trial and Appeal Board (PTAB) terminated covered business method (CBM) proceeding of U.S. Patent No. 7,860,222 B1, nearly one year after institution, because PTAB determined the '222 patent doesn't relate to a "financial product or service" as required under the American Invents Act (AIA).

See 2015 CBM00145 for details. Also see AIA § 18 (Related to 35 U.S.C. 321) stating that the Director may institute a CBM proceeding only for a patent that is a covered business method patent .... "The term 'covered business method patent' means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions."

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.

PTAB - Proposed Rule Recognizing Privileged Communications Between Clients and Patent Practioners at the Patent Trial and Appeal Board

Today, the USPTO published a proposed rule: Rule Recognizing Privileged Communications Between Clients and Patent Practitioners at the Patent Trial and Appeal Board (PTAB).

Here is a summary from the USPTO:

"This proposed rule would amend the rules of practice before the Patent Trial and Appeal Board to recognize that, in connection with discovery conducted in certain proceedings at the United States Patent and Trademark Office (USPTO or Office), communications between U.S. patent agents or foreign patent practitioners and their clients are privileged to the same extent as communications between clients and U.S. attorneys. The rule would apply to inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings. This rule would clarify the protection afforded to such communications, which is currently not addressed in the rules governing Board proceedings at the USPTO. This new rule will not affect the duty of disclosure and candor before the Office under 37 CFR 1.56.

Comment date: The Office solicits comments from the public on this proposed rulemaking. Written comments must be received on or before December 19, 2016 to ensure consideration.

Comments should be sent by electronic mail message over the Internet addressed to: acprivilege@uspto.gov.

Comments may also be submitted by postal mail addressed to: Mail Stop OPIA Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of "Soma Saha, Patent Attorney, Patent Trial Proposed Rule on Privilege."

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.

PTAB - Expediting Ex Parte Appeal

The USPTO announce a pilot program where the Patent Trial and Appeal Board (PTAB) will expedite an ex parte appeal if appellant withdraws another appeal (e.g., abandons or files a RCE).

The pilot program is available to June 16, 2016 or PTAB expedites 2,000 appeals, whichever occurs first.

Here's the USPTO announcement:

"The PTAB is pleased to announce a new pilot program, beginning on June 19, 2015, that will allow appellants with multiple ex parte appeals pending before the Patent Trial and Appeal Board (Board) to expedite review of one appeal in return for withdrawing another appeal. The Expedited Patent Appeal Pilot will allow appellants having multiple ex parte appeals currently pending before the Board to have greater control over the priority with which their appeals are decided and reduce the backlog 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/438) for use in filing the certification and petition."

For more information refer to the Federal Register Notice and PTAB web page.

Copyright © 2015 Robert Moll. All rights reserved.

PTAB - Effective Use of Claim Grouping in Appeals

The Patent Trial and Appeal Board (PTAB) published an article Effective Use of Claim Grouping in Appeals that presents how to effectively present arguments to the Board.

The article states "when transitioning from examination to appeal, an appellant moves from negotiating patentable claims to resolving disputed patentability issues. The appeal brief normally is the Board’s first exposure to an appellant’s case, and it is the appellant’s first opportunity to persuade the panel to rule in its favor. Therefore, an appellant should take care to craft a clear and persuasive brief that quickly educates the Board panel about the issues and technology, and focuses on appellant’s strongest arguments, while avoiding the introduction of any new issues."

Although the article has some good advice -- focus most if not all of your appeal brief on winning issues, I think its advice to group claims is risky because many PTAB decisions use claim groupings as a mechanism to support affirmance of rejection of the entire group.

Copyright © 2015 Robert Moll. All rights reserved.

PTAB - Denies Issue Joinder under 35 USC 315(c)

In Target Corp. v. Destination Maternity Corp., the Patent Trial and Appeal Board (PTAB) held that joinder under 35 USC 315(c) applies only to different parties and not to petitions filed by the same party.

Under 35 USC 315(b), inter partes review may not be instituted if the petition requesting it is filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.

Target had filed a second petition for inter partes review after the one-year window to attack a patent claim that was excluded from the trial order of its first petition. Target requested under 35 USC 315(c) that the Director exercise discretion to join it as "any party" to that first inter partes review.

The PTAB held the petition was too late under 35 U.S.C. § 315(b) and denied joinder stating a petitioner filing a second petition after the one-year window cannot join as "any party" to its first petition because it is already a party.

The PTAB also stated absence from the statute of an express prohibition against joining another petition to an instituted inter partes review does not inform whether the authority to do so has been granted.

Copyright © 2014 Robert Moll. All rights reserved.

PTAB - Denial of Inter Partes Review Under 35 USC 325(d) - Seven Informative Decisions

The Patent Trial and Appeal Board (PTAB) does not usually deny a petition for inter partes review, but can under 35 U.S.C. § 325(d), which permits denial when a petition raises the same or substantially the same prior art or arguments previously presented to the USPTO.

As stated in 35 U.S.C. § 325(d) Multiple Proceedings.—  Notwithstanding sections 135 (a), 251, and 252, and chapter 30 sections 135 (a), 251, and 252, and chapter 30, during the pendency of any post-grant review under this chapter, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the post-grant review or other proceeding or matter may proceed, including providing for the stay, transfer, consolidation, or termination of any such matter or proceeding. In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office (emphasis added).

Today, the Patent Trial and Appeal Board (PTAB) designated the following decisions as "informative" as to denial of institution of inter partes review under 35 USC § 325(d). 

Medtronic, Inc. v. Nuvasive, Inc. (September 2014)

Unified Patents, Inc. v. PersonalWeb Techs. (July 2014)

Prism Pharma Co., Ltd. v. Choongwae Pharma Corp. (July 2014)

Unilever, Inc. v. Procter & Gamble Co. (July 2014)

Medtronic,Inc. v. Robert Bosch Healthcare Systems, Inc. (June 2014)

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Limited (November 2013)

ZTE Corp. v. ContentGuard Holdings, Inc. (September 2013)

For copies of other PTAB decisions

Copyright © 2014 Robert Moll. All rights reserved.

PTAB - Ariosa Diagnostics v. Isis Innovation Ltd. - Extraterritorial Depositions during Inter Partes Review

Today, the Patent Trial and Appeal Board (PTAB) issued informative decisions related to taking of an extraterritorial deposition in a foreign language. See inter partes review Ariosa Diagnostics v. Isis Innovation Ltd., IPR 2012-00022 (Paper 55 and Paper 67).

Also see the Board’s Informative Opinions Web page.

Copyright © 2014 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.

America Invents Act (AIA) Patent Trial and Appeal Board - AIA Trial Roundtable in Denver and Webcast on May 8

The Patent Trial and Appeal Board (PTAB) is concluding the AIA Trial Roundtables in Denver on Thursday, May 8.

I was able to attend the roundtable in Silicon Valley a week ago, and enjoyed the presentations and mingling with the patent community. If you are outside the Denver area, you should catch the webcast that starts at 1 pm MDT. The USPTO has done an excellent job of preparing for the roundtables!

Here is the access link to watch, learn, and share feedback with the administrative patent judges (APJs) about the AIA trials: http://www.cba-cle.org/uspto.html

As stated in the reminder, "the program is broken into three segments, so feel free to join for any or all of them:
• Segment 1 (one hour): lecture to highlight trial filing statistics and lessons learned about inter partes review and covered business method review proceedings
• Segment 2 (one hour): mock conference call focused on a motion to amend the claims and a motion for additional discovery
• Segment 3 (approximately 1.5 hours): panel discussion with expert AIA trial practitioners and APJs covering all phases of the trial process."

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - America Invents Act Patent Trials Roundtables

The Patent Trial and Appeal Board (PTAB) has invited me (as well as many others) to attend roundtables on the new America Invents Act (AIA) patent trials (e.g., inter partes review, post-grant, covered business method review and derivation). It sounds like a timely conference.

Here's the invitation with the dates and locations if you are interested.

Copyright © 2014 Robert Moll. All rights reserved.