Venue Differences. Claim Amendments During AIA Proceedings 4/16/2015. The Patent Trial and Appeal Board

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1 The Patent Trial and Appeal Board Created by statute, and includes statutory members and Administrative Patent Judges Claim Amendments During AIA Proceedings The PTAB is charged with rendering decisions on: appeals from adverse examiner decisions, post-issuance challenges to patents, and interferences Nate Bailey Phone: (615) Fax: (615) Waller Lansden Dortch & Davis, LLP. All Rights Reserved. Basics: The Patent Trial and Appeal Board (PTAB) A lot of examiners Very few members of the PTAB Even fewer chosen to serve on the trial division Result: Enhanced review of patents Venue Differences Venue Trier of Fact Technical Expertise Legal Expertise USPTO Examiner Art-specific ~15 % have JD ITC ALJ Typically none U.S. District Court Federal Circuit District Court Judge Appellate Judge (3) PTAB APJ (a panel of 3) Typically none Typically none Typically holds a M.S. or Ph.D. JD (general) JD (general) JD (general) JD (with years of patent law training) 1

2 Inter Partes Review (IPR) Major Differences between IPR, PGR, and CBM Petitioner Standard Basis Major Differences between IPR, PGR, and CBM Proceeding Available Applicable Post Grant Review (PGR) Inter Partes Review (IPR) Covered Business Method (CBM) Person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent Person who is not the patent owner, has not previously filed a civil action challenging the validity of a claim of the patent, and has not been served with a complaint alleging infringement of the patent more than 1 year prior (exception for joinder) Must be sued or charged with infringement Financial product or service Excludes technological inventions More likely than not OR Novel or unsettled legal question important to other patents/ applications Reasonable likelihood Same as PGR 101, 102, 103, 112, double patenting but not best mode 102 and 103 based on patents and printed publications Same as PGR (some 102 differences) Post Grant Review (PGR) Inter Partes Review (IPR) Covered Business Method (CBM) From patent grant to 9 months after patent grant or reissue For first-inventor-to-file, from the later of: (i) 9 months after patent grant or reissue; or (ii) the date of termination of any post grant review of the patent. For first-to-invent, available after grant or reissue (technical amendment) Available 9/16/12 (for firstinventor-to-file only after PGR not available or completed) Patent issued under first-inventor-to-file Patent issued under first-to-invent or first-inventor-to-file Patents issued under first-to-invent and first-inventor-to-file Rambo Disclaimer This analogy is for illustrative purposes only. Don t overthink it. I ll discuss some takeaways at the end 2

3 The Rambo Analogy The Rambo Analogy Col. Trautman: Federal Circuit/Federal Courts Sherriff Teasle: Patent Examining Corps/Patents Rambo: the PTAB Trial Division The National Guard: Patent Owner s Counsel Rambo s Knife: An AIA Proceeding(Sharpened by Skilled Petitioner s Counsel) The Rambo Analogy The Training Col. Trautman: Federal Circuit/Federal Courts Rambo: the PTAB Trial Division Sherriff Teasle: Patent Examining Corps/Patents Rambo s Knife: An AIA Proceeding(Sharpened by Skilled Petitioner s Counsel) The National Guard: Patent Owner s Counsel Many Judges at the PTAB are former Federal District Court Clerks and former Federal Circuit Clerks Chief Judge James Smith is a former Federal Circuit Law Clerk (Paul R. Michel) Vice Chief Judge Scott Boalick is a former Federal Circuit Law Clerk (Alvin A. Schall) Board has focused on recruiting former clerks 3

4 The Training The Training PTAB has to follow Federal Circuit precedent So Who Made Rambo? What Does Rambo Do with Patents? 4

5 AIA Petitions Final Decisions AIA Petitions Final Decisions # of Final IPR Decisions Claims Challenged IPR Final Decisions Claims on Which IPR Claims Proceedings Cancelled Instituted Claims Upheld Proceedings Allowing Amendment 78 1,242 1, % 79% 20% # of Final IPR Decisions # of Proceedings with All Challenged Claims Instituted IPR Final Decisions # of # of # of # of Proceedings Proceedings Proceedings Proceedings with Less where All where Less where All than All Instituted than All Instituted Challenged Claims are Instituted Claims are Claims Cancelled Claims are Found Instituted Cancelled Patentable AIA Petitions (Cumulative Number as of 10/23/14) What Does Rambo Do with 100 s of Patents? 5

6 But How Do We Stop Rambo? Many Judges at the PTAB are former Examiners Many Judges at the PTAB are former solicitors Patent Owner s Counsel? Both have a tendency to side with Affirming Examiners in ex parte appeals and with Patent Owners in AIA proceedings The longer an APJ has been on the outside, however, the more likely their belief that the PTO is issuing invalid patents How Do We Stop Rambo? How Do We Stop Rambo? The Problem with Patent Owner s Counsel Which Tactics Should We Use? 6

7 AIA Petitions (Final Dispositions) PTAB Profile Dislike conclusory attorney argument (Doesn t mean you need a lot of analysis, just some) Have a lot of work & demand efficiency in arguments presented The Statute* Ask First Amendment of the Patent. - IN GENERAL. During an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways: Cancel any challenged patent claim. For each challenged claim, propose a reasonable number of substitute claims. * * * * SCOPE OF CLAIMS. An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter Must request permission to file This procedure enhances efficiency by saving the patent owner s time and resources to prepare a motion that would otherwise be denied because of certain reasons, such as: An unreasonable number of substitute claims or An Amendment that does not respond to a ground of unpatentability. *35 U.S.C. 316(d), as amended by the Leahy-Smith America Invents Act (Pub. L , 125 Stat. 284 (2011)) ( AIA ) 7

8 Burden of Proof Support As the moving party, the patent owner has the burden of proof in establishing entitlement to the requested relief. 37 C.F.R (c). A motion to amend claims must clearly identify the written description support for the proposed substitute claims. 37 C.F.R (b)(1) requires the patent owner to set forth the support in the original disclosure of the patent for each proposed substitute claim. Support Continued Substitution The proposed substitute claims need not be described in haec verba in the original disclosure in order to satisfy the written description requirement. However, should the claim language does not appear in ipsis verbis in the original disclosure, a mere citation to the original disclosure without any explanation as to why a person of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter as a whole may be similarly inadequate. Subsection (a)(3) of 37 C.F.R states that a motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims, and then provides: The presumption is that only one substitute claim would be needed to replace each challenged claim, and it may be rebutted by a demonstration of need. (Emphasis added) 8

9 Don t Underestimate the PTAB Don t Underestimate the PTAB Alternatives Lessons Learned A patent owner may file a request for ex parte reexamination, relying on the Board s conclusion of a petitioner s having shown reasonable likelihood of success on certain alleged grounds of unpatentability as raising a substantial new question of unpatentability. A patent owner may also seek to file a reissue application. The rocket launcher did not work At the end it took Col. Trautman talking him down to end the battle. The entire time Col. Trautman was telling Sheriff Teasle to let him slip through Key Takeaway: Make it easy for the PTAB 9

10 Questions? 10