Posts Tagged: "PTAB"

SCOTUS asked to consider constitutional challenge to post grant patent proceedings

The question presented in the petition for certiorari in Cooper v. Lee is whether 35 U.S.C. §318(b) violates Article III of the United States Constitution, to the extent that it empowers an executive agency tribunal to assert judicial power canceling private property rights amongst private parties embroiled in a private federal dispute of a type known in the common law courts of 1789, rather than merely issue an advisory opinion as an adjunct to a trial court. This case raises a constitutional challenge to new post-grant patent proceedings.

Will Cruz act to protect property rights, Constitution at Supreme Court?

The Patent Act itself clearly and unambiguously states that patents are property. See 35 U.S.C. 261. Unfortunately, this property right of Constitutional significance has increasingly come under attack over the last decade. Without either substantial legislative fixes, or a new Administration that orders a new Director of the USPTO to rewrite post grant regulations, no single case could undue the significant damage that has been done to the U.S. patent system by the creation of the PTAB and post grant proceedings. That being said, Cuozzo does offer an excellent opportunity to say enough is enough and fight to protect a Constitutionally critical property right our most respected Founding Fathers thought to be absolutely critical.

Finjan wins big patent victory as USPTO denies institution on 6 Symantec IPR petitions

That Finjan would prevail in six separate IPR institution decisions relating to the same patent litigation seems an extraordinary long shot. While Finjan has not said it in a press release or to me directly (see more later), allow me to notice that this speaks volumes both about the relative strength of the Finjan patents and the relative weakness of the Symantec invalidity case against these patents. If the PTAB wasn’t even willing to take another look in a proceeding that is so hopelessly stacked against the patent owner these patents are about as rock solid from a validity standpoint as they could possibly be.

Supreme Court accepts Cuozzo Speed Technologies IPR appeal

On Friday the United States Supreme Court added several cases to its docket for this term. One of those cases is Cuozzo Speed Technologies v. Lee, a case that will require the Supreme Court to address two critically important questions associated with inter partes review (IPR) proceedings. First, is it appropriate for the United States Patent and Trademark Office to use a different claim constructions standard than is used in federal district court. Second, are institution decisions insulated from judicial review.

Federal Circuit says same PTAB panel can decide both IPR institution and merits

The Federal Circuit, in an opinion by Judge Dyk who was joined by Judge Taranto, first held that 35 U.S.C. § 314(d) did not preclude the Court from hearing Ethicon’s challenge to the authority of the Board to render a final decision. On the merits the panel held that neither the statute nor the Constitution precludes the same panel of the PTAB that made the decision to institute inter partes review from making the final determination. The Federal Circuit also found no error in the Board’s determination that the ’070 patent claims would have been obvious over the prior art. Judge Newman dissented, concluding that in order to restore confidence in the reliability of patents as “investment incentives” the USPTO must conform the inter partes review process to the statute.

2015 litigation trends highlight increased patent litigation, decreases in file sharing cases

2015 saw the second-most patent infringement cases brought to court, according to Lex Machina’s data. A total of 5,830 patent cases were filed, a 15 percent increase over the 5,070 patent cases which were filed during 2014. 2015 still trailed behind 2013 in terms of patent infringement cases; that year set the high-water mark for patent infringement cases with 6,114 cases filed in that year.

Timely filed supplemental information does not need to be considered by PTAB in IPR

The PTAB refused entry of the supplemental information because Redline did nothing to justify submitting it after filing the initial IPR petition and even after the institution decision was made, other than to say that submitting it then was cost effective. The PTAB pointed out that the authorization to submit supplemental information under 42.123 does not require the PTAB to accept such information even if it is timely, noting that the moving party bears the burden in all cases to demonstrate entitlement to the relief, a rule that patent owners seeking to amend are all too familiar with (i.e., despite there being a right to file an amendment the PTAB says there is no associated right to amend).

Federal Circuit Reverses PTAB Claim Construction in IPR

The Patent Trial and Appeal Board (Board) cancelled the claims of the patent, finding them anticipated or obvious over several references. The Board construed “is connected” to mean that the computer be “active and online at registration,” even if the connection server’s database record was inaccurate, and the computer was no longer online. The Court reversed this construction, holding that the plain and ordinary meaning of the term “is connected” requires that the computer be connected to the network at the time the query is sent. The term “is” has a plain meaning, which requires concurrency. Where the claim language has a plain meaning that leaves no uncertainty, the specification generally cannot be used to infer a different meaning, absent clear redefinition or disavowal.

Bias in Both Directions: Patent Reform Should Protect Both Accused Infringers and Inventors

What’s stunning about this list is that almost nobody talks about reforming patent law to correct these biases! In general, the only biases that are socially and politically acceptable to correct are biases in favor of patent owners. It is profoundly unfair to correct biases in the patent system to protect accused infringers if we do not also correct biases in the patent system to protect inventors. It is interesting to ask why modern patent reform overwhelmingly protects accused infringers without also protecting inventors. I worry that the patent reform asymmetry fits within a larger trend of decline in the great Western traditions of innovation, due process, meritocratic competition in the race to invent, reliance on property rights and business investments, and strong support for intellectual property as distinct from real and personal property.

Cuozzo and Broadest Reasonable Interpretation – Should the Ability to Amend Be Relevant?

On July 8, in In re Cuozzo, the CAFC denied en banc review of a prior panel decision that confirms the PTAB can use a different standard for interpreting claims than a district court. The patent owner in In re Cuozzo filed a Petition for a Writ of Certiorari to the Supreme Court on October 6, 2015. The response was due on November 9, 2015. If the Supreme Court takes up the issue, it could decide contrary to the current Federal Circuit precedent. It is also possible that Congress could change the standard for claim construction that applies to post-grant proceedings through legislation.

CAFC Overturns PTAB IPR Decision for Refusing to Consider Motivation to Combine

On appeal, Ariosa challenged the Board’s refusal to consider the background reference because it was not identified as a piece of prior art “defining a combination for obviousness.” The Federal Circuit agreed with Ariosa’s position that the background reference should have been considered by the Board, stating that background art must be considered even though such art is not true “prior art” presented as the basis of obviousness grounds for review. While the Court did agree that Ariosa’s articulation of the background reference’s impact on motivation to combine prior art references was lacking, the Court found the Board’s explanation for its failure to consider the reference equally lacking and thus warranting remand.

Understanding Court, PTAB Interplay Key in Today’s Patent Litigation Environment

The PTAB has seen more than triple the number of inter partes review (IPR) petitions—now the preferred way for a company accused of infringement in court to challenge a patent’s validity—than it projected when the challenge first became available in 2012. But the fact that proceedings can run simultaneously presents challenges.

PTAB Hedge Fund Failures Diffuse Early Market Hysteria

The early “death squad” hysteria persisted just long enough to catch the interest of hedge funds. The hedge funds saw an opportunity to utilize the PTAB to spook financial markets to their gain. The game plan involved establishing “short” positions in publically traded stocks that have their valuation closely tied to patents, as is the case in the Bio/Pharma sector. Given the PTAB’s early infamy, the bet was that the mere filing of an IPR would spook investors enough to move a stock price to the negative (i.e., quick profit for a short seller). Yet, as hedge funds targeting Bio/Pharma patents have quickly learned, gambling on patent challenges in the unpredictable arts is not a viable, long-term business model.

2015 Supreme Court Term: Cert Petitions to Watch

Since the start of the Supreme Court’s term in October, the Court has already agreed to hear two patent cases, Halo Electronics, Inc. v. Pulse Electronics, Inc. and Stryker Corp. v. Zimmer, Inc. Both cases address the issue of willful infringement and when it is appropriate for a court to award enhanced damages under 35 U.S.C. § 284. The only question that remains is whether the Court will continue its recent trend of taking three or more patent cases a term, or whether it will revert to its longer term average of accepting only one to two patent cases. Against the wider backdrop of the Supreme Court’s shrinking merits docket, it is notable that patent law consistently draws the attention of the Court under Chief Justice Roberts. Here we take a look at four cert petitions raising patent law issues, and handicap the odds of being granted.

Death to All Patents? Really? Why Inter Partes Review Shouldn’t Be Controversial

I understand that patent owners are upset at having the playing field leveled somewhat. They must feel like the rules of the game have changed, and, to be fair, they have to some extent. But a patent is not real property and it’s not an entitlement. It’s a temporary grant of exclusivity by the government in exchange for sharing one’s invention with the public, assuming that the invention is novel and non-obvious. If it turns out that the original patent issuance was wrong, i.e., someone else came up with the invention first, you have to give up that grant.