Throughout last year, decisions made by the Patent Trial and Appeal Board (PTAB) sometimes offered clarity—and sometimes more confusion—to practitioners. What follows are some of the significant decisions of 2015, addressing issues such as the proper standard for interpreting claims in an America Invents Act (AIA) trial, redundancy, claim amendment, and the PTAB’s approach to covered business method (CBM) proceedings.
A recent final written decision demonstrates the possible benefit to objecting to evidence that could be disputed, even if that evidence is not inadmissible under the Federal Rules of Evidence. In Gillette Co. v. Zond, LLC, the Board invalidated the claims-at-issue as obvious over a combination of references that includes a Russian dissertation catalogued in a Moscow library. In a somewhat rare occurrence for the Board, one of the Administrative Patent Judges wrote a dissent to the majority opinion.
The Board recently held its final Boardside Chat of the year. The focus of the presentation was the proposed rule package that was published in late August. After a brief overview of the proposed changes, the panel discussed the background, rationale, and implications of the proposed rules. Here’s a short recap of two of the main takeaways.
The PTAB’s long-awaited proposed rule package is now ready and scheduled to be published in the Federal Register tomorrow. The PTO is not proposing changing its claim construction standards, or its rules regarding motions to amend, but it proposes some significant procedural changes, including allowing patent owners to file new evidence with preliminary responses, and changes to page limits in primary filings. The PTO also indicated that a new Office Patent Trial Practice Guide (last updated in 2012) will be published with the final rulemaking for the proposed rules.
As we recently noted, patent owner Celgene moved for sanctions against Kyle Bass and his hedge funds, arguing that the funds are engaged in extortion and that they are abusing the IPR process. On August 11, 2015, the hedge funds responded with a full-throated defense of their practices (IPR2015-01103 Paper 15).
On August 4th, the PTAB held its fourth Boardside Chat Webinar. Originally intended to address the forthcoming proposed rule changes for AIA trials, due to the fact that the proposed rules have not published yet, the format was changed to a Q&A “Ask the Judges” panel. Although the panel avoided touching on the some of the hot-button issues currently facing the PTAB, including what the Board will do about the Kyle Bass hedge fund IPR phenomenon, they did discuss a variety of topics. Here is a quick recap:
Rich Giunta, co-chair of our Post-Grant Proceedings Group, recently spoke at our IPR seminar about strategies he's found useful when representing a party challenging a patent in an IPR. To start with: solid prior art, a story that makes sense, and being honest about potential flaws. And avoid these mistakes.
Changing the “broadest reasonable interpretation” standard of claim construction is a job for Congress, not the Federal Circuit, at least according to two opinions released by the Federal Circuit last week in In re: Cuozzo Speed Technologies, LLC, No. 2014-1301.
Jim Harrington, senior vice president and global chief intellectual property counsel at Shire Pharmaceuticals, and Peter Toto, senior vice president of intellectual property at Sony Corporation of America, recently spoke at our IPR seminar about what they look for. Spoiler alert: Patent prosecution experience is key.
The PTAB repeatedly emphasizes that an IPR is supposed to be a narrowly-tailored procedure, and that it wishes to avoid sideshows that would distract from the question of patentability. Recently, in Apple Inc. v. E-Watch, Inc., one panel of the PTAB held that it does not have the authority to consider procedural issues not central to the §§ 102 or 103 analysis. Case No. IPR2015-00411, Paper 12 (P.T.A.B. May 7, 2015).