May 17th, 2013
On May 13, 2013, the Patent Office issued a memo to USPTO examiners after the CLS Bank et al. v. Alice Corp. Federal Circuit en banc decision of last week. The memo instructs examiners to maintain existing examination procedure for evaluating subject matter patentability. Deputy Commissioner for Patent Examination Policy, Andrew Hirshfeld, advised examiners: ” . . . at present, there is no change in examination procedure for evaluating subject matter eligibility. Current procedure detailed in MPEP 2106 should continue to be followed.”
The memo summarizes the initial takeaways from CLS Bank as follows:
- There was agreement that the test for eligibility is not a rigid, bright line test and must be made by evaluating a claim as a whole, on a case-by-case basis, using a flexible approach.
- Many of the judges explicitly noted that the test for eligibility is a separate and distinct inquiry from other patentability concerns, particularly novelty and obviousness.
- It was generally agreed that when evaluating the claim as a whole the claim must be analyzed to determine whether the additional limitations add significantly more, or in other words add meaningful limits, to the abstract idea or law of nature.
The memo concludes that further study is needed and that this is an ongoing consideration in light of the decision:
Given the multiple divergent opinions, the USPTO is continuing to study the decision in CLS Bank and will consider whether further detailed guidance is needed on patent subject matter eligibility under 35 U.S.C. § 101.
Tags: appeal, Bianchi, claims, ex parte prosecution, federal circuit, litigation, patent prosecution, Tim Bianchi
Posted in claim challenges, Ex Parte Prosecution, patent-eligible subject matter | No Comments »
May 14th, 2013
This is a story about not one, but two stays. The first stay is a district court stay pending the outcome of a reexamination of a patent in suit. The second is an administrative (PTAB) stay of that same reexamination pending the outcome of an AIA patent litigation proceeding based on that same patent.
The District Court Stay
It started when Encap, LLC filed suit against the Scotts Company on July 18, 2011 (Encap, LLC v. The Scotts Miracle-Gro Company, LLC, E.D. Wis. Case No. 1:11-cv-000685-WCG). The complaint for patent infringement involved Encap’s U.S. Patent 6,209,259 (“the ’259 patent”) and two other patents. The ’259 patent relates to a combination seed capsule comprising a viable seed and a coating comprising soil conditioning materials. On March 9, 2012, the Scotts Company filed an ex parte reexamination request to challenge the patentability of the ’259 patent. That request resulted in an order for ex parte reexamination (Reexamination Control No. 90/012,183) on April 27, 2012. The ex parte reexamination resulted in a rejection of claims 1-5, 7-11, and 13-14 of the ’259 patent based on a Great Britain Patent 670,461 to Matthews (1949) and U.S. Pat. No. 4,065,287 to Roth (1977). The rejection included an obviousness rejection based on a combination of Roth and U.S. Pat. No. 5,019,564 to Lowe. In response, Encap did not amend claims but instead added new claims 15-44. Ultimately, the district court ordered stay of the litigation in a decision dated August 31, 2012 (according to PACER).
The Reexamination Stay
The Central Reexamination Unit (CRU) handling the ex parte reexamination issued a second non-final office action on December 21, 2012. Meanwhile, on January 10, 2013, the Scotts Company filed a petition for inter partes review of the ’259 patent in the PTAB (The Scotts Company LLC v. Encap, LLC; IPR2013-00110). Shortly after that, Encap filed its response for rejection in the ex parte reexamination on February 21, 2013. Encap filed a supplemental response on March 1, 2013. A Notice of Defective Paper was issued by the PTO on April 20, 2103 allowing Encap one more month to correct its response, but Encap won’t need that month because on Monday, May 13, 2013, the Patent Trial and Appeal Board (PTAB) ordered a stay of the reexamination prior to deciding on whether to institute trial in the inter partes review.
Reasons for the Reexamination Stay
The Board noted that even though the claims subject to ex parte reexamination include additional claims that are not the subject of the IPR petition, all of the challenged claims are being reexamined. Additionally, some of Petitioner’s asserted grounds of unpatentability in the IPR are based on the same prior art references that are the bases of the Examiner’s rejections in the reexamination. In its Order of May 13th (at p. 2), the Board explained the administrative stay of the reexamination as follows:
The Board will not ordinarily stay a reexamination because, in the absence of good cause, reexaminations are conducted with special dispatch. Conducting the reexamination concurrently with the instant proceeding, however, would duplicate efforts within the Office and could potentially result in inconsistencies between the proceedings. Notably, because all the challenged claims also are being reexamined, the Patent Owner could amend those claims, which could change the scope of the challenged claims while the Board is conducting its review. Further, because of the overlap between the asserted prior art references in this proceeding and the bases of the Examiner’s rejections, the patentability of all of the challenged claims could be determined in both the instant proceeding and the reexamination based on the same grounds of unpatentability.
The Board is required to determine whether to institute an inter partes review within 3 months after receiving the preliminary response from the patent owner. 35 U.S.C. § 314(b). The Patent Owner’s Preliminary Response was filed April 15, 2013 (according to PRPS). The final determination of any review instituted will normally be issued no later than 1 year from institution. 35 U.S.C. § 316(a)(1), and 37 C.F.R. § 42.100(c). The Board found that any decision on whether to institute a review or final written decision with respect to the patentability of the challenged claims will likely simplify the issues in the reexamination.
Patent Owner’s Preliminary Response explains that the parallel district court litigation is stayed pending the resolution of the ’259 ex parte reexamination. Patent Owner makes it clear that “time is of the essence” in a decision, alleging that “Petitioner continues to sell hundreds of millions of dollars of infringing products each year.” (Patent Owner Preliminary Response at page 7).
Summary
Petitioner has used ex parte reexamination and an inter partes review to achieve a double stay; one stay in district court pending the ex parte reexamination and another stay of the ex parte reexamination (Central Reexamination Unit) pending the outcome of the PTAB inter partes proceeding. If trial is instituted in the PTAB, it will be interesting to see how the PTAB handles the situation where an ex parte reexamination which included an amendment adding several new claims is now handled in the PTAB, where claim amendments are typically limited to a one-for-one replacement (absent permission from the Board to include more).
Tags: Bianchi, claims, ex parte reexamination, inter partes review, IPR, issued patent, litigation, motion to stay, patent, patent litigation, patent trial and appeal board, petition, PTAB, reexam, reexamination, stay of parallel administrative action, Tim Bianchi
Posted in America Invents Act, inter partes review, Litigation, PRPS Patent Review Processing System, PTAB, PTAB Patent Trials, reexamination generally, stay, stay of other administrative proceedings | No Comments »
May 10th, 2013
In an earlier post we explored many ways that reexamination differs from post-grant review, inter partes review, and covered business method review. The PTAB has been very clear that reexamination and AIA patent trials are very different. For example, in ScentAir Technologies v. Prolitec, Inc. (IPR2013-00179 (JL)), the PTAB denied authorization for ScentAir to file a motion to disqualify Prolitec’s counsel in an inter partes review based on a prosecution bar in a protective order from the parallel litigation (paper no. 9).
During the conference call, the PTAB received assurances from counsel for ScentAir that “. . . nothing in the district court’s protective order expressly bars counsel from being counsel of record in an inter partes review before the Patent Trial and Appeal Board, although there is a ‘prosecution bar’ in the protective order prohibiting litigation counsel from drafting or amending claims while prosecuting an application before the U.S. Patent and Trademark Office.”
The Board denied authorization for ScentAir to file a motion for disqualification:
The Board finds informational and key that the protective order at issue specifically bars litigation counsel from prosecution activities without mentioning litigation or trials before the Patent Trial and Appeal Board. An inter partes review is not original examination, continued examination, or reexamination of the involved patent. Rather, it is a trial, adjudicatory in nature and constituting litigation.
In the future, litigation counsel will have to be more detailed about what activities are subject to a prosecution bar to avoid confusion about whether counsel in the district court litigation may participate in trials before the PTAB.
Tags: Bianchi, CBM, covered business method, ex parte prosecution, ex parte reexamination, inter partes reexamination, inter partes review, IPR, litigation, patent, patent litigation, patent prosecution, patent trial and appeal board, PGR, Post Grant Review, prosecution bar, PTAB, reexam, Tim Bianchi
Posted in covered business methods, inter partes review, Litigation, motion practice, Post Grant Review, Prosecution Bar, Protective Order, PTAB, PTAB Patent Trials, reexamination generally | No Comments »
May 8th, 2013
One of the criticisms lodged against traditional reexamination proceedings is that when a request for reexamination is filed, the proceeding may take on a life of its own and typically cannot be withdrawn even if the parties want to dismiss the action. The AIA provides for patent office trials with more options for parties, because they can move to request termination of the action before a final decision by the Board. However, the Board is not a party to a settlement and has independent powers to determine jurisdiction and patentability.
The rule lays out the requirements for settlement:
37 C.F.R. § 42.74 Settlement.
(a) Board role. The parties may agree to settle any issue in a proceeding, but the Board is not a party to the settlement and may independently determine any question of jurisdiction, patentability, or Office practice.
(b) Agreements in writing. Any agreement or understanding between the parties made in connection with, or in contemplation of, the termination of a proceeding shall be in writing and a true copy shall be filed with the Board before the termination of the trial.
(c) Request to keep separate. A party to a settlement may request that the settlement be treated as business confidential information and be kept separate from the files of an involved patent or application. The request must be filed with the settlement. If a timely request is filed, the settlement shall only be available: (1) To a Government agency on written request to the Board; or (2) To any other person upon written request to the Board to make the settlement agreement available, along with the fee specified in § 42.15(d) and on a showing of good cause.
Settlements have already begun in PTAB proceedings. An early settlement was negotiated after filing of an inter partes review petition, but before institution of proceedings in Komatsu America Corp. v. Leroy G. Hagenbuch (IPR2013-00130 relating to U.S. Pat. No. 7,039,507). Komatsu filed a petition for IPR on January 29, 2103, challenging claims 2, 4-7, 13-18, and 25-36 of the ’507 patent. The Patent Owner had until May 4, 2013 to file a preliminary response, but instead the parties settled their action in a parallel district court proceeding and filed a joint Motion to Terminate the IPR on April 30, 2013. The motion included copies of the district court settlement and a copy of the confidential settlement between the parties. The parties also included a motion to keep the settlement business confidential information pursuant to the rule. The Board granted the request for confidentiality and terminated the proceedings on May 6, 2013, which was prior to institution of proceedings.
Of course, the prior art cited against the ’507 patent is now publicly available due to the filing of the IPR petition, so that may affect the practicality of future enforceability of the ’507 patent, but the parties have avoided legal estoppel due to termination of the proceedings before any final written decision by the Board. (37 C.F.R. § 42.73) This case is an example of how early termination of AIA post-grant proceedings can follow settlement, saving the parties and the Board further time and expense.
Tags: Bianchi, estoppel, inter partes review, IPR, issued patent, litigation, patent litigation, patent trial and appeal board, PTAB, Tim Bianchi
Posted in America Invents Act, estoppel, inter partes review, Litigation, Termination of Post-Grant Proceedings, Uncategorized | 1 Comment »
May 6th, 2013
As you may recall from earlier posts, on September 16, 2012, SAP filed a petition for review of U.S. Pat. No. 6,553,350 to begin the first covered business method patent review (CBM2012-00001) under the America Invents Act. To advance its PTAB trial date, SAP agreed to limit its argument to 35 U.S.C. 101 challenges set forth in its petition and not assert its prior art challenges in the CBM.
The PTAB trial was held on April 17, 2103, and we are awaiting a decision in that trial. The Federal Circuit also just decided the appeal in the parallel district court action last week. The Federal Circuit affirmed the infringement and damages findings by the lower court, but remanded for correction of the injunction ordered by the lower court.
SAP recently filed papers in the PTAB action indicating that it has requested an ex parte reexamination based on its prior art R/3 documentation of the same ’350 patent. Ex parte reexamination requests are still prosecuted in the Central Reexamination Unit and using “special dispatch.” It will be interesting to see if the CRU will be able to expedite these reexaminations in light of the changes brought by the AIA. One important change being the shift of future inter partes proceedings to the PTAB (legacy inter partes reexaminations are still being completed in the CRU).
Tags: appeal, Bianchi, CBM, covered business method, ex parte reexamination, federal circuit, inter partes reexamination, IPR, issued patent, litigation, patent, patent claims, patent litigation, patent trial and appeal board, petition, PGR, Post Grant Review, PTAB, reexam, reexamination, Tim Bianchi
Posted in America Invents Act, claim challenges, covered business methods, Litigation, patent-eligible subject matter, Post Grant Review, prior art, PTAB, PTAB Patent Trials, reexamination generally, reexamination pendency, Special Dispatch | No Comments »
May 4th, 2013
A detailed discussion of the Versata v. SAP litigation and a timeline was provided in my earlier post. I reported that there are three actions related to this dispute: one in the PTAB, one in the Eastern District of Virginia, and one in the Federal Circuit. On May 1, 2013, the Federal Circuit affirmed the lower court jury decision on infringement and damages awards and vacated part of the trial court’s permanent injunction and remanded for further proceedings based on the opinion.
SAP claimed the trial court’s failure to grant a JMOL of noninfringement of the ’350 Patent was two-fold error. It argued that its software cannot infringe because the software is not capable of performing customer and product hierarchies without added computer instructions. Further, it claimed that the software does not use “denormalized mnumbers” in its pricing tables. However, the Federal Circuit found no reversible error by the trial court.
SAP argued that the code it shipped was not infringing. It argued that the claim language “computer instructions capable of” and “computer instructions causing a computer to implement” are not directed to source code and that this language requires that the software, as shipped, contain computer instructions to perform the claimed functionality. SAP asserted that the expert’s data setup added new computer instructions to its software, thereby changing and modifying a noninfringing product into an infringing product. The Court disagreed:
SAP misinterprets the claim language. The only claim construction affecting these terms was the stipulated construction of “computer instructions to implement” which the parties agreed means “computer instructions causing a computer to implement.” It does not appear that SAP requested any claim construction of the term “computer instructions,” much less a construction that limits the phrase to exclude source code or require that the patented function be “existing as shipped” in the computer instructions. SAP cannot now collaterally attack the claim construction it has agreed to. Function Media L.L.C. v. Google Inc., 708 F.3d 1310, 1321–22 (Fed. Cir. 2013) (noting a party may not object to a claim construction it proposed or agreed to); Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359, 1376 (Fed. Cir. 2010) (“As we have repeatedly explained, litigants waive their right to present new claim construction disputes if they are raised for the first time after trial.”) (internal quotation omitted).
Whether “computer instructions” can include source code thus becomes a pure factual issue. Versata’s expert testified that the source code is a computer instruction. He then presented evidence that the code, without modification, was designed to provide the claimed functionality. SAP cross-examined the expert, but the jury ultimately chose to credit the expert’s testimony and documentary evidence. SAP has not met the high standard needed to disregard the jury’s fact-finding function on this issue. See Bagby Elevator Co. v. Schindler Elevator Corp., 609 F.3d 768, 773 (5th Cir. 2010) (giving great deference to the jury’s findings and verdict); Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1342–43 (Fed. Cir. 2008) (stating that this court owes the jury great deference in its role as the factfinder).
The Court also rejected the argument that its software does not use denormalized numbers in its pricing tables:
Again, sufficient evidence supports the jury’s verdict. Versata’s expert testified that SAP’s software contains numbers without “fixed units.” The numbers can assume a different meaning depending on which pricing operation is being performed by the software.
The Court did not find reversible error concerning the damages awards, but did remand the injunction to the trial court for correction of the injunction, stating:
SAP should be able to provide maintenance or additional seats for prior customers of its infringing products, so long as the maintenance or the additional seat does not involve, or allow access to, the enjoined capability.
Of course, the PTAB has yet to decide on the matter before it which is limited to 35 U.S.C. 101 issues. It will be interesting to see what happens next.
Tags: appeal, Bianchi, CBM, covered business method, damages, federal circuit, issued patent, litigation, patent, patent litigation, patent trial and appeal board, PTAB, Tim Bianchi
Posted in covered business methods, Damages, Litigation, Patent Reform, Post Grant Review, PTAB, PTAB Patent Trials, PTO Sued Under the APA, Uncategorized | No Comments »
April 29th, 2013
Patent practitioners are still absorbing some of the differences and advantages that are unique to litigation in the PTAB as opposed to district court litigation. For example, PTAB proceedings only decide questions of validity and are not directed to rule on questions of infringement or damages, as is the practice in traditional litigation. Another example is that PTAB trials require that the petitioner provide a lot of technical arguments and factual evidence in the original petition, as opposed to traditional litigation where parties make sure they have a good faith basis to sue and then rely on discovery to later develop the case. Thus, a petition for review of patentability in PTAB practice is more akin to a summary judgment motion than a complaint in trial practice. But a PTAB petition is still very different than a summary judgment motion. And these differences can be exploited to more inexpensively and quickly resolve validity issues.
In considering summary judgment, a judge must decide if there is “no genuine dispute as to any material fact,” as set forth in FRCP Rule 56. In contrast, the technical patent judges on the Board can decide technical disputes instantly and can resolve disputes of technical and legal nature. PTAB panels use their technical and patent law experience to quickly identify dispositive issues and focus the parties on how their respective positions are being viewed by the Board early in the proceedings. This means that PTAB trials will put a premium on identification of technical defects in patents early in the proceedings, as opposed to traditional litigation approaches that favor discovery before attempting summary judgment or that shy away from summary judgment as a mechanism for resolution of complex technical disputes.
Examples of the Board’s unique capabilities are already being demonstrated in recent orders. For example, in an inter partes review by Chimei Innolux Corporation against Semiconductor Energy Laboratory Co.,Ltd. concerning U.S. Patent No. 8,068,204 (IPR2013-00068), the Board squarely addressed technical disputes between what the petition asserted versus what the patent owner’s preliminary statement set forth when the Board decided to institute trial.
The Board took great care to understand and sift through extremely technical differences between the claimed subject matter and the prior art as it was characterized by the parties. This is a highly complicated task, because the patent relates to improvements for substrate bonding and electrical connections in liquid-crystal displays and because the parties were advancing very technical arguments on both sides of the validity issue. In this early order to institute trial the Board construed a phrase from the claims and used that construction to decide the merits of the positions taken by the petitioner and patent owner. The Board then considered technical arguments made by both parties, such as whether a reference used in combination in an obviousness challenge teaches away from the combination (page 15), or whether it would have been obvious to employ a known (contact) structure (page 18). The Board decided that certain arguments were not persuasive and used the order to focus the parties on the issues it ruled upon. The following excerpt from pages 19-21 of the the order instituting trial demonstrates the attention to detail that the Board is devoting to these proceedings:
SEL responds that “[. . .] a person of ordinary skill in the art does not know whether an insulating film (first insulating film) is formed between the bottom layer of the first wiring line 127 (formed in the step of forming the scanning lines Yj) and the top layer of the first wiring line 127 (formed in the step of forming the data lines Xi).” (Prelim. Resp. 31.) According to SEL, Shiba’s “‘two-layered structure’” might be “sequentially stacked” without an insulating layer therebetween. (Id.) As noted, claim 31 requires such an intervening insulating layer.
SEL’s argument is not persuasive. Shiba implies or suggests that the two wiring layers in the two-layered structure 127, formed in the same manner as the two-layered scanning and data lines as the quoted passage shows, have an insulating layer therebetween just like the scanning and data lines. [cite omitted] [. . . .] Skilled artisans also would have understood that overlapping portions readily could have been “partially connected” together by known methods, including using a connecting hole through such an insulating layer. [cite omitted]
Because the two-layered structure in Shiba’s lines 127 connect to pad 751, SEL maintains that under various hypothetical scenarios, pad 751 also must have a two-layered structure, and as such, with Sukegawa’s transparent layer modified to be on Shiba’s pad as CMI proposes in its ground of unpatentability, the pad structure would become a three-layered structure. . . . SEL also argues that the Petition inconsistently conflates or interchanges Sukegawa’s transparent layer and the top layer of Shiba’s two-layered wiring structure 127, and thereby fails to show how the combination renders obvious the external connection line and transparent conductive film as recited in claims 31 and 54. (See Prelim. Resp. 25-26.)
It is clear from the analysis set forth by the Board that it is not afraid to weigh in on very technical issues and clarify how it perceives the arguments. Of course, the preliminary response by the patent owner is considered a first initial response and is not a comprehensive response with evidence. Therefore, the Board’s institution of trial is based on limited argument and is well before the patent owner has had an opportunity to fully respond. But this process focuses the parties on issues that the Board (at least initially) perceives to be negative to the patent. It is a preliminary ruling on the disputed issues by the Board that will shape discovery to come, as opposed to traditional litigation where discovery often leads and shapes the issues brought before the court.
Parties who believe that an asserted patent has validity issues may find it difficult to challenge disputed technical issues in summary judgment motion practice. Validity issues are frequently accompanied with fact questions and in litigation there is a clear and convincing standard for invalidity that makes it hard to prove invalidity. And it is unlikely that counsel will recommend a motion for summary judgment before conducting at least some discovery. In contrast, in patent reviews and reexaminations the burden of proof is based on a preponderance of the evidence and can be done without discovery. Given the different standards and the costs of e-discovery, there are significant advantages to the PTAB patent review option for defendants with genuine validity arguments. But one must be careful to choose the PTAB trial option carefully to avoid estoppel should the proceeding not result in destruction of the relevant patent claims.
Tags: appeal, Bianchi, board of patent appeals, burden of, clear and convincing, estoppel, inter partes review, IPR, issued patent, litigation, patent claims, patent litigation, patent trial, patent trial and appeal board, preponderance of the evidence, presumption of validity, PTAB, Tim Bianchi
Posted in America Invents Act, claim challenges, Claim Construction, clear and convincing evidence, estoppel, inter partes review, Litigation, preponderance of evidence, PTAB, PTAB Patent Trials, Uncategorized | No Comments »
April 26th, 2013
On April 17, 2013 the PTAB heard oral arguments in the first covered business method patent review between SAP and Versata. SAP challenged the validity of Versata’s U.S. Patent No. 6,553,350 in the PTAB under 35 U.S.C. § 101. My earlier posts detailed the events. The PTAB trial transcript has recently been published and the trial exhibits are available here. The parties now await a decision from the PTAB and in the Federal Circuit appeal of the case styled Versata Software, Inc v. SAP America, Inc., No. 2:07-cv-00153 (E.D. Tex). There is also a suit in the Eastern District of Virginia challenging the PTAB’s institution of covered business method patent review.
When SAP agreed to limit its PTAB arguments to 35 U.S.C. § 101-related issues, it requested a decision from the PTAB by the end of May. It remains to be seen whether the PTAB decision or the Federal Circuit decision will come first. We will be watching to see what happens next.
Tags: appeal, Bianchi, CBM, covered business method, federal circuit, issued patent, litigation, patent, patent claims, patent litigation, patent trial and appeal board, petition, PTAB, reexam, reexamination, Tim Bianchi
Posted in claim challenges, covered business methods, Litigation, patent-eligible subject matter, Post Grant Review, PTAB, PTAB Patent Trials, PTO Sued Under the APA, Uncategorized | No Comments »
April 24th, 2013
Progressive Casualty Insurance Co. sued different insurance companies for patent infringement of 5 of its patents in 2010-2012 in the Northern District of Ohio. (Cases 1:10CV01370 and 1:11CV00082 against Safeco; Case 1:12CV01068 against State Farm; and Case 1:12CV01070 against Hartford.) One of the defendants is Safeco Insurance Company, which has Liberty Mutual as its parent. In 2012 and 2013 Liberty Mutual filed ten covered business method patent review (CBM) petitions (two CBM petitions were filed per patent). Eight of these ten petitions were instituted for trial and two petitions were denied, but each of the five patents has at least one CBM where trial was instituted by the PTAB.
Liberty Mutual and the remaining defendants moved to stay the litigation based on the CBMs instituted. Progressive opposed the motion to stay. The District Court heard oral arguments on April 11, 2013, and granted the motion stay on April 17, 2013.
The court used a four-factor test set forth in the AIA section pertaining to CBMs (AIA § 18(b)(1), P.L. 112-29, 125 Stat. 284, 331):
- (1) whether a stay, or the denial thereof, will simplify the issues in question and streamline the trial;
- (2) whether discovery is complete and whether a trial date has been set;
- (3) whether a stay, or the denial thereof, would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party; and
- (4) whether a stay, or the denial thereof, will reduce the burden of litigation on the parties and on the court.
It is interesting that the Liberty Mutual litigation was previously stayed pending the outcome of ex parte reexaminations, yet the Court found the benefits of inter partes covered business method review compelling enough to order another stay pending the outcome of the PTAB trials. Some of these benefits observed by the Court include:
- CBM proceedings are inter partes rather than ex parte, which allows Liberty mutual “a better platform to advocate its interests.”
- CBM proceedings are “presided over by a panel of three administrative judges whom are required to have ‘competent legal knowledge and scientific ability,’ 35 U.S.C. § 6(a), as opposed to a single patent examiner.”
- To institute CBM review, the petitioner must show the claims are likely invalid, 35 U.S.C. § 324(a), which is more onerous than meeting the “substantial new question of patentability” standard required to initiate ex parte reexaminations.
- The Court also found the short timeline of the CBM proceedings (to be completed within 18 months of institution of trial), to be attractive and likely to decide issues before the Court.
For further information the order for stay provides the details of the Court’s findings and has a detailed table attached at the last page showing the different CBMs and their status.
Tags: Bianchi, CBM, covered business method, estoppel, ex parte reexamination, issued patent, litigation, motion to stay, patent, patent claims, patent litigation, patent trial and appeal board, PTAB, reexamination, SNQ, stay, substantial new question of patentability, Tim Bianchi
Posted in America Invents Act, claim challenges, covered business methods, estoppel, estoppel from administrative proceeding, factors for stay, indefiniteness, Litigation, Patent Reform, patent-eligible subject matter, Post Grant Review, PTAB, PTAB Patent Trials, reexamination generally, statutory subject matter, stay, Uncategorized | No Comments »
April 22nd, 2013
Suppose a patent owner files suit and the defendant wants to file an AIA post-grant proceeding to challenge the validity of the patent. Suppose further that the post-grant challenge is an inter partes review (IPR) filed by the defendant within a year of service of process of the complaint. If the IPR petition only alleges grounds of invalidity for certain claims, and the patent owner later amends its complaint to add more claims to the action after the one year period of 35 U.S.C. § 315(b) that were not the subject of the original IPR petition, is the petitioner forced to use ex parte reexamination to challenge the newly added claims? No. If the petitioner can apply for joinder under 37 C.F.R. § 42.122(b), the PTAB may consider the second petition and join it with the first timely filed petition, even if it is beyond the one year period of 35 U.S.C. § 315(b). In Microsoft v. Proxyconn, IPR2013- 00109, the Board allowed joinder, stating:
As is apparent from the statute, a request for joinder affects certain deadlines under the AIA. Normally, a petition for inter partes review filed more than one year after the petitioner (or the petitioner’s real party-in interest or privy) is served with a complaint alleging infringement of the patent is barred. 35 U.S.C. § 315(b), as amended; 37 C.F.R. § 42.101(b). However, the one-year time bar does not apply to a request for joinder. 35 U.S.C. § 315(b)(final sentence); 37 C.F.R. § 42.122(b). This is an important consideration here, because Microsoft was served with a complaint asserting infringement of the ʼ717 patent more than a year before filing the second Petition. Pet. 1. Thus, absent joinder of this proceeding with IPR2012-00026, the second Petition would be barred. Moreover, in the case of joinder, the one-year time requirement for issuing a final determination in an inter partes review may be adjusted. 35 U.S.C. § 316(a)(11), as amended.
This is good news for that Petitioner, since it allowed for adjustment of the petition grounds via joinder to match claims added to a parallel litigation after the one year period of 35 U.S.C. § 315(b).
A motion for joinder was very recently filed in IPR2013-00250 (Ariosa Diagnostics v. Isis Innovation), seeking to join the IPR2013-00250 proceeding with the trial already instituted in IPR2012-00022. The motion for joinder cites the rule excerpt:
§ 42.122 Multiple proceedings and Joinder.
(b) Request for Joinder. Joinder may be requested by a patent owner or petitioner. Any request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested. The time period set forth in § 42.101(b) shall not apply when the petition is accompanied by a request for joinder.
It will be interesting to see how the Board considers joinder under the various fact patterns that are inevitable in practice.
Tags: 35 USC 315(b), 37 CFR 42.101(b), 37 CFR 42.122(b), Bianchi, claims, inter partes review, IPR, Joinder, patent, patent claims, patent reform, patent trial and appeal board, PTAB, Tim Bianchi
Posted in America Invents Act, Joinder of AIA Proceedings, motion practice, Patent Reform, PTAB, Uncategorized | No Comments »
