Posts Tagged: "PTAB"

One of the effects of this bill, were it enacted by Congress as currently written, would be to modify the enforcement activities of the U.S. Securities and Exchange Commission (SEC). Recent coverage of the bill by Bloomberg BNA notes that the proposed legislation would allow parties involved in a legal action to move the action out of SEC tribunal and into U.S. district court… As Bloomberg BNA’s coverage notes, SEC’s in-house tribunals have been criticized in recent months… While the Financial CHOICE Act itself doesn’t pose any direct impact to the U.S. patent system, it does highlight a similar issue playing out at the USPTO in recent years.

Overall, a significant number of the eleven judges present for argument hinted through their questioning that they thought the PTO’s rulemaking was problematic…. The PTO’s position is that the burden of proof allocated by § 316(e) is not applicable to motions to amend and therefore it may regulate the burden of proof on such motions based on the authority granted to it in § 316(a)(9). Judge Reyna jumped in almost immediately during the PTO’s argument to question the validity of the PTO’s rulemaking. In his view, there is no validly promulgated PTO regulation that places the burden of persuasion for motions to amend on the patent owner.

It is that time once again when we look back on the previous year in preparation to close the final chapter on 2016 and to look ahead toward 2017. With patent reform surprisingly stalled, the biggest news stories of the year may have been the Patent Trial and Appeal Board (PTAB)… As 2016 started and through at least the first half of 2016 it seemed as if the PTAB had become rather all-powerful and completely unsusceptible to judicial restraints. As we close 2016 and look forward to 2017 a decidedly different picture seems like it is emerging… The other big news story of 2016 was with respect to patent eligibility…

Several weeks ago Internet Association President Michael Beckerman sent a letter to President Elect Donald Trump and the Trump Transition Team. The Internet Association is made up of companies that are by and large openly hostile to the U.S. patent system and innovators. The letter touched upon issues ranging from copyright safe harbors under the Digital Millennium Copyright Act (DMCA) to recommended reforms to the Electronic Communications Privacy Act (ECPA) to open access to the Internet and, of course, patent reform. I will confine my comments (see below) to the Internet Association’s patent reform commentary… Not that it should come as any surprise to anyone who follows the patent reform debate, but what the Internet Association says here is a lie.

In a handful of IPRs, the Petitioner has relied on a video, and asserted that the video constitutes a printed publication… One factor raised in these cases is the mode by which the video was distributed. Two different modes can be identified: a first in which the video was actively distributed on a physical medium such as a CD; and a second in which the video was passively accessible as by availability on the internet.

The PTO then drifted towards being a very user unfriendly operation that has become a center of suspicion and cynicism. I do not think Director Lee necessarily played a direct role in this, i.e., guided this trajectory with policy objectives, but rather was present when it occurred. I do think, however, that politics and branding may have played a role. Kappos had been perceived as too “pro patent”; after all, he hailed from the PTO’s largest customer, IBM. Then Lee became the “anti-patent antidote”; hailing from a patent system foe, Google.

On December 9, 2016, the en banc Federal Circuit will hear argument in In re Aqua Products, Inc. on an issue that has long been troubling patent owners involved in inter partes reviews (“IPR”)—the difficulty of amending patent claims before the Patent Trial and Appeal Board (“PTAB”)… The Federal Circuit granted a petition for rehearing en banc to consider whether the burden of persuasion allocated to the patentee by the PTAB for motions to amend is permissible under the statutory scheme.[5] Notably, the Federal Circuit’s rehearing order specifically identifies 35 U.S.C. § 316(e), which provides that in an IPR “the petitioner,” not the patent owner, “shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” The Federal Circuit also will consider whether the PTAB can raise sua sponte challenges to patentability, much the way an examiner would, if the IPR petitioner fails to do so.

In an IPR decision, the Patent Trial and Appeal Board invalidated several claims from U.S. Patent No. 6,030,384 as anticipated or obvious over Japanese Publication No. H1033551A. The Federal Circuit vacated and remanded. The antedating inquiry under Pre-AIA section102(g) is directed to evidence of diligent activity during the critical period as a whole and does not require justifying every period of unexplained inactivity.

Claimed methods incidental or complimentary to financial services are not necessarily reviewable as CBM patents. The claims as they were written must be directed to methods and apparatuses that have particular uses in connection with a financial product or service. For a patent to be a CBM patent, “[i]t is not enough that a sale has occurred or may occur, or even that the specification speculates such a potential sale might occur.”

Hands on exercises were part of the program. In reading and understanding a patent application, materials were provided how examiners learn to break down an application in order to prepare to conduct a search. Work sheets and a sample problem of a mechanical device (a tortilla making machine) application with prior art references were provided to the attendees so they could do a disclosure analysis, determine any §112(f) issues, create a claim diagram, create a claim tree and ascertain if there are any other §§112 and/or 101 grounds of rejection. Another exercise was claim mapping using the same sample problem and additional prior art using PTO forms to formulate allowances and rejections. After the exercises were completed, there was discussion of what was learned and how there are many different ways to reach a conclusion.

”It appears to me that en banc consideration [of Achates] is warranted,” Judge Taranto wrote. ”It is notable, to begin with, that the [Supreme] Court pointedly avoided embracing the simplest and most review-barring reading of § 314(d) – namely, that it prohibits judicial review of any determination to institute an IPR.”

Now that Trump has won, the discussion has narrowed to whether Trump will keep patents weak or make patents great again. From the outside perspective, it is a curious exercise to say the least… Why are we even asking these questions? Property is property, right? Can you remember an election where people were asking if their deed would keep squatters out of their living room depending on who won the presidency? I don’t. It seems a preposterous question. After all, the deed on your house is a property right and everybody knows the government will back it up and eject the squatters. So why then do we, or should we, have to ask whether a Trump Administration will be in favor of strong patent rights? It all seems bizarre to say the least.

The PTAB used the wrong standard to institute the CBM proceeding in the first place, which lead the Federal Circuit to vacate the PTAB decision and remand the case for further consideration by the PTAB – namely the application of the proper standard… As the Federal Circuit would point out later: “All patents, at some level, relate to potential sale of a good or service.” To allow this PTAB created standard that has no textual support in the statute to be applied would be to allow virtually any patent to be the subject of a CBM. That was clearly was not the intent of Congress and it would fly directly and unambiguously in the face of the explicit language of the statute. The PTAB is significantly limited in their power to institute a CBM.

The way Lee talks about the PTAB makes me wonder whether she is referring to the same entity that I commonly refer to as the PTAB. Indeed, Lee’s remarks come across as if leprechauns are dancing across a magical rainbow in search of unicorns being ridden by fairies. It is a fiction that I am just not familiar with; a fiction that patent owners simply do not recognize to be true… To then say that innovation isn’t served if patents are only issued after many years of examination reeks of being hopelessly out of touch. In certain areas of the Patent Office it is not at all unusual for applicants to be awarded 10 years of additional patent term; term that is awarded as the result of Patent Office delay. Getting any patent takes years, getting a worthwhile patent in a commercially viable market segment takes many years, if not a decade or longer. NEWSFLASH: Innovation is already not being served because many innovators do not obtain a patent for extraordinary and unreasonable lengths of time. It is almost as if patent examiners fight a war of attrition against applicants, who are treated like the enemy.

The Federal Circuit denied appellant SAS’s petition for rehearing en banc from a decision by the Patent Trial and Appeal Board, without an explanatory opinion. Judge Newman dissented. Without discussing the facts of the case, she undertook to review the statutory provisions for inter partes review (“IPR”) proceedings under the America Invents Act (“AIA”). According to Newman, the Court should have granted the petition, in order to correct the Patent Office position that “the final order of the [Patent Trial and Appeal] Board need not address every claim raised in the petition for review.” According to Judge Newman, a review of the statutory provisions of the AIA makes it clear that, if the PTAB decides to institute review, it should do so for all of the challenged claims, not just some of the challenged claims.