Posts Tagged: "PTAB"

Reflections on 2013 and Some Thoughts on the Year Ahead

2013 turned out to be a very big year for IP, and especially patents, and the year took a course that few would have predicted this time last year. At that time, the senior team at the PTO was primarily focused on the imminent departure of our then-boss, David Kappos, and the end of what had clearly been an extraordinarily active and successful tenure. The AIA had been almost entirely implemented, the new Patent Trial and Appeal Board was up and running, and most of us expected 2013 to be focused on implementation and execution of the AIA and the other initiatives that had been set in motion under Director Kappos.

Post Grant Challenges: Strategic and Procedural Considerations

There are several varieties of a stay. With post grant proceedings we’re talking mostly about discretionary stay. Every district court has inherent right to do this. Judges are generally favorable to granting stays with more being granted than not. “All a judge has to do is get burned once by not granting a stay, going to trial to the end, and then having claims invalidated by the Board and then having to have an appeal,” says John J. Marshall, law professor at Villanova University School of Law, previously Of Counsel at Drinker Biddle. The initial stay before a petition is granted is short. Then after the petition is granted, the district court judges are more likely to grant a stay, because IPR will simplify issues that might be important to the district court judge. That quick timeline is one of the factors that helps you get a stay for concurrent litigation and getting ammunition for use in district court claim construction. In fact, you may find that these factors are so persuasive that if a defendant in district court case files a petition for IPR, and you, as another defendant, can’t join because you are past the one month joinder cutoff, you still may be asked to stay your case until other defendant’s IPR concludes. As of October 2013, contested stay motions pending IPR petitions have a 68.5 percent grant rate and those pending CBM petitions have an 83 percent grant rate, according to a Finnegan infographic based on the published PTO AIA statistics. Those are really good rates. It’s something to consider even in districts like Delaware or East Texas.

Deciding Whether a Post Grant Challenge is Right for You

A goal of nearly every defendant is to lower the total cost of resolution of any legal issue. As counsel for the defendant, you have to weigh the settlement and licensing costs of a patent dispute against the total defense cost and how long it takes to resolve the dispute with certainty. Today, CBM, IPR, and PGR are the lowest possible cost options. Speed is one of the biggest benefits. The statute requires that a PGC proceeding must be completed in 12 months after institution, and in rare cases this extends to 18 months if the PTAB exercises a good cause exception. APJs are motivated to stay on deadline.

Patent Turmoil: Navigating the Software Patent Quagmire

Despite the turmoil surround software patent eligibility I believe with great certainty that software will remain patent eligible in the United States. The extreme decisions of the PTAB and viewpoints of those on the Federal Circuit opposed to computer implemented methods will not prevail because they are inconsistent with the Patent Act and long-standing patent law jurisprudence. After all, the Supreme Court itself explicitly found software patent eligible in Diamond v. Diehr. In the meantime, while we wait for the dust to settle, we need to engage in a variety of claiming techniques (i.e., methods, computer readable medium, systems claims, means-plus-function claims and straight device claims). Thus, if you are interested in moving forward with a patent application it will be advisable to file the application with more claims than would have been suggested even a few months ago. Patent attorneys also must spend increased time describing the invention from various viewpoints, which means specifications should increase in size. This all means that there is no such thing as a quick, cheap and easy software patent application – at least if you want to have any hope of obtaining a patent in this climate.

Did the PTAB Just Kill Software Patents?

Under what authority does the PTAB ignore specifically recited structure? The authority that the PTAB seems to be relying on to ignore claim terms is unclear and not explained in the opinion in any satisfactory way. It does, however, seem that the fact that the invention can be implemented in any type of computer system or processing environment lead the PTAB to treat the method as one that could be performed on a “general purpose computer,” rather than a specific purpose computer. Thus, the PTAB picks up on the arbitrary and erroneous distinctions between general purpose computer and specific purpose computer without as much as a thought and wholly without factual explanation.

Kappos on Patent Trial and Appeal Board Trial Proceedings

Kappos explained that the PTAB has started and will continue, in at least some cases, to issue shorter per curiam decisions, which will allow them to decide more cases and move through the backlog. Co-Chair of the program, Rob Sterne, asked Kappos whether this would present problems for those who might want to appeal to the Federal Circuit. Given the standards applied by the Federal Circuit will it be possible for an applicant ever be able to satisfy the standards? Kappos acknowledged that is a concern and why we will see hundreds of shorter per curiam decisions rather than thousands. Kappos explained that the USPTO wants these types of decisions issued only when the record is extremely clear, making a detailed decision of the Board less necessary.

David Kappos Headlines Post-Grant Patent Trial Program in NY

A new addition to the program just announced today is David Kappos, who is the immediate former Director of the United States Patent and Trademark Office. Kappos, a life-long employee of IBM prior to taking charge of the USPTO, is now with Cravath, Swaine & Moore LLP in New York City. Kappos will discuss the Patent Trial and Appeal Board, specifically discussing ex parte reexamination, the remaining legacy inter partes reexamination cases, inter partes review and the transitional program relating to covered business method patents. His segment will run from 9:15 am to 10:15 am. In addition to being presented live in New York City the program will also be webcast.

New Patent Fees: USPTO Exercises Fee Setting Authority

The final rules on patent fees will publish in the Federal Register on Friday, January 18, 2013. Fees are going up for most, but not as much as feared. It will be more expensive to file a utility patent application, except for micro-entity applicants (see Utility Filing Fees Table), but it will be less to pay the issue fee once you get a Notice of Allowance (see Issue Fee Table). It will cost 29% more to file the first RCE for large and small entities (see First RCE Fees Table), and 83% more for subsequent RCE filings for large and small entities (see Subsequent RCE Fees Table). The ex parte reexaminations fees are much lower, down 32% and 66% respectively for large and small entities (see Reexam Fees Table), but are still much higher compared to where they were prior to them being raised over 600% recently. Of course, cutting ex parte reexamination fees means the overall cost is still roughly 250% higher for small entities and 500% higher for large entities than this time last year.

Do Patent Applicants have a Chance at the CAFC?

Do patent applicants appealing a rejection of their claims from the Patent Trial and Appeals Board have a chance of success at the Court of Appeals for the Federal Circuit? What about patentees appealing to the CAFC from rejections in reexamination proceedings? The candid answer is not much of a chance. Of course, every case is different and needs to be considered on its own merits. Yet, the standards for review of Board decisions, followed by the CAFC, significantly favor affirmance of those decisions.

Patent Bar Blues: New Rules, Old MPEP Make for Difficult Study

The unfortunate thing is that all of these individuals were getting this question incorrect and anyone who relied on this information moving forward would get the question incorrect. The MPEP section that points to one answer as correct cites an old version of the Rule. The Rule was modified in a Federal Register Notice, which is a testable document and supersedes the MPEP. The new language of the Rule has not yet made it into the MPEP section. The moral of the story is that you have to be very careful when you rely on these forum sites and take advice from someone who is either studying or just passed the exam. They may be giving you good information, but they may be leading you astray.

Ex Parte Yudoovsky: Petitions Are (Sometimes?) Unnecessary to Traverse Unauthorized New Grounds of Rejection on Appeal

The Board of Patent Appeals and Interferences did something fascinating in Ex Parte Yudoovsky. The Board sua sponte declined to consider an unauthorized new ground of rejection—even though the appellant never filed a petition. In other words, the Board refused to consider a new ground of rejection, because the Examiner failed to designate the ground as “new.”

PTAB Chief Smith and Vice-Chief Moore, Part III

Vice-Chief Judge Moore: “The statute requires that each of the judges have scientific ability.  It doesn’t actually require particularized training in any one individual specific area.  Permit me to key off of what the Chief said earlier — we do use that to advantage in some instances.  For example, imagine a software controlled electro-mechanical device which is useful in a biotechnology operation.  I could throw four different judges with four different specialties – biotech, electrical, mechanical, and software – on that so that that panel as a whole could understand it better and help each other through the process.  And that is a huge advantage.  We have at least one team here at the Board that’s truly multidisciplinary.  They handle all types of cases from all types of disciplines without regard as to their own personal technical training aspects.”

PTAB Chief Smith and Vice-Chief Moore, Part II

Chief Judge Smith: “The unique thing about the job particularly right now – and I think this is true for my job and the Vice Chief Judge job – is that while we have many, many administrative duties they do not remove from us completely the non-administrative judging duties that we have.  And I think we both like a mix in which we also get to the judging, sitting on panels for example.  We are under-emphasizing that part of our jobs right now because we absolutely have to do that.  There’s only so much judging you can get to in the typical 18-hour day when you have so many other things to do.”

Exclusive: Chief Judge James Smith and Vice-Chief James Moore

The interview took place on the Alexandria Campus of the USPTO in the Madison Building. We sat around a modest conference table in the office of Chief Judge Smith. We chatted for approximately 60 minutes. Smith and Moore give us a rare glimpse into the Board and the day-to-day inner workings of the two top Administrators who also work hard to seek opportunities to stay engaged and join panels whenever possible.

8 New PTAB Judges Sworn in at USPTO

Leading up to the swearing in, PTAB Vice-Chief Judge James Moore explained the need for the new Judges, as well as pointing out that the USPTO has already had 13 covered business method patent reviews and 42 inter partes reviews initiated just since they became available on September 16, 2012 in the second wave of implementation of the America Invents Act (AIA). “We have doubled our hearing review capacity,” Moore explained. He also said that the approximately 27,000 cases pending at the Board this year “was a high water mark and we will recceed from there thanks to the help of those sitting behind me,” referring to the soon to be sworn in APJs.


Warning: Undefined array key "prefix" in /www/ipwatchdogcom_574/public/wp-content/themes/ipwatchdog/parts/archives/paging.php on line 24