With the U.S. Patent and Trademark Office Trial Practice Guide update released last month, a significant change was made to the substantive filings. In the revised section II.I. (Sur-replies), the following language changes the rules:

“Sur-replies to principal briefs (i.e., to a reply to a patent owner response or to a reply to an opposition

The recent decision in SAS Institute v. Iancu — in combination with the proposed shift from a broadest reasonable interpretation (BRI) standard to the Phillips standard for claim construction used in district court — moves trials at the U.S. Patent Trial and Appeal Board toward being the most likely forum for first consideration of claim construction and patent validity, and perhaps a shift toward becoming a truer “alternative” to litigation, as Congress envisioned under the America Invents Act.

In the first five years since PTAB trials went into effect, the result has been an increase in PTAB trials running concurrently with district court litigation pertaining to the same patent. Indeed, since the inception of PTAB trials, a majority of cases have had co-pending litigation.


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The recent decision in General Plastic Industrial Co. v. Canon Kabushiki Kaisha denying the petitioner’s requests for a rehearing provided a “baseline” of factors to be considered as to the limited circumstances when second — or “follow-on” — petitions are likely to be successful in Patent Trial and Appeal Board trials.

The petitioner in General Plastic filed two inter partes review petitions, each challenging one patent. The PTAB denied institution on the merits. The petitioner then sought rehearing, which was denied. The petitioner filed further petitions several months later with newly discovered art, challenging the same two patents based in part on the new references.

The decision, rendered by an “expanded” panel including Chief Judge David P. Ruschke, is significant both procedurally — because the decision was rendered by an expanded panel — and substantively — because it provided greater clarity to all parties in an area of PTAB trials processes that had previously been somewhat inconsistent, and recently was designated “precedential,” a rare status indicating it is binding on future PTAB decisions unless replaced or undone.

To date, less than half of follow-on petitions have been instituted, showing the PTAB’s reservations about them. However, there was great disparity in the prior PTAB decisions on this topic, including whether all seven factors laid out in NVIDIA v. Samsung Electronics were addressed. The varied outcomes led commentators and practitioners alike to wonder whether initiation of a given follow-on petition was dependent on the particular panel drawn by petitioner.

Thus, the decision to render the decision via an expanded panel and label the case as precedential likely represents a recognition of the inconsistency of the PTAB decisions in follow-on petitions, and stands as a statement that the analysis in the General Plastic decision should be followed by the PTAB on a going-forward basis.


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The recent Patent Trial and Appeal Board decision in General Plastic Industrial v. Canon Kabushiki Kaisha (PTAB September 6, 2017; Paper 19) has caused many commentators to note that patent owners should be pleased with the decision as favorable to them. Indeed, the PTAB articulated that “multiple, staggered petition filings, such as those here, are an inefficient use of the inter partes review process and the Board’s resources.” However, historically less than 50% of follow-on petitions by the same petitioner have been instituted. Therefore, it’s not clear that the decision in General Plastic will effect much of a change in the already-low institution rate of follow-on petitions. The language used by the expanded panel that “there is no per se rule precluding the filing of follow-on petitions” and that “there may be circumstances where multiple petitions by the same petitioner against the same claims of a patent should be permitted” indicate that the institution of such “follow-on” petitions should be considered exceptional.

For petitioners seeking to file follow-on petitions, however, the General Plastic decision provides guidance as to what may be considered such exceptional circumstances, by providing hints for how to maximize the chances of having a second petition instituted.


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As we mark the fifth anniversary of the effective date of Patent Trial and Appeal Board trials on September 16, we find that the early years of the practice have been a learning experience both for the PTAB and for PTAB practitioners.

The PTAB had some initial growing pains when the new procedures began, with the number of petitions received far exceeding the number expected. The U.S. Patent and Trademark Office requested and received much feedback via public comment, instituted rule changes, and has had its procedures and trial outcomes tested in both the Court of Appeals for the Federal Circuit and the United States Supreme Court.

Likewise, PTAB practitioners have had to evolve along with the PTAB changes, as they familiarized themselves with the procedures for this new variety of “specialized agency proceeding” within the USPTO, as it was described in Cuozzo Speed Technologies v. Lee, 579 U.S. ____ (2016). PTAB practitioners have had to adapt to the rule changes and court decisions and learn through their own experiences in PTAB trials and guidance provided by the Administrative Patent Judges presiding over the cases.

Reflecting on the past five years, three key lessons emerge for practitioners, from practice and directly from the APJs presiding over these cases when they have spoken on topic: Follow the rules, including those that are explicit and those that are unspoken, know your audience, and focus on the facts.


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During the first three years of implementing the America Invents Act (AIA), Patent Trial and Appeal Board (PTAB) decision-making created a perception that a patent owner’s ability to amend claims during a post-grant proceeding was limited, at best. In 2015, legislative activity began to address this perceived problem with draft amendments to the patent statute.

While specific proposals varied, the concept of one approach was that a patent owner seeking to amend claims during a PTAB trial, could prosecute its proposed amendments like ordinary examination (or reexamination) in parallel with the underlying PTAB trial. This amendment examination process, termed an “off ramp” by some, has raised a number of policy and administrative issues.
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The “hybrid” procedure of inter partes review has been considered since its inception by some to be litigation at occurs at the patent office, rather than in district court.  The designation of IPRs and other procedures as “patent office trials” by the America Invents Act (AIA), as well as adherence to the Federal Rules of Evidence (FRE) in many instances helped contribute to this sentiment.  However, in Cuozzo Speed Technologies, LLC v. Lee, No. 15-446 (June 20, 2016), the Supreme Court put this notion to rest, concluding that, “in [] significant respects, inter parties review is less like a judicial proceeding and more like a specialized agency proceeding.”  

In Cuozzo, the Court upheld the prior Federal Circuit decision, in which Cuozzo had challenged – and lost – on two procedural aspects of inter partes review: (1) the reviewability of the Board’s institution decisions and (2) the use of a “broadest reasonable construction” (BRC) standard in claim construction.
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