In its Notice of Proposed Rulemaking published on October 18, 2016, the USPTO proposes to amend the rules of practice before the PTAB to “recognize that, in connection with discovery conducted in certain proceedings at the [USPTO], communications between U.S. patent agents or foreign patent practitioners and their clients are privileged to the same extent as communications between clients and U.S. attorneys.” 81 Fed. Reg. 71653 (Oct. 18, 2016). The rule would apply to the various PTAB proceedings that entail discovery, including IPRs, PGRs, the transitional program for CBMs, and derivation proceedings.
Continue Reading Proposed Rule to Recognize Patent Agent Privilege in PTAB Proceedings
Supreme Court Declines to Weigh in on AIA Issues
The Supreme Court recently issued orders (Oct. 3 and Oct. 11) denying several petitions for certiorari challenging aspects of AIA trials. As we previously reported, two of those petitions challenged the constitutionality of AIA trials and the Patent Office’s authority to cancel patent rights between private parties. Cooper v. Lee, __ S.Ct. __, 2016 WL 361681 (Oct. 11, 2016); MCM Portfolio v. Hewlett-Packard Co., et al., __ S.Ct. __, 2016 WL 1724103 (Oct. 11, 2016). On the same day, the Court denied Merck’s petition challenging the Federal Circuit’s deferential standard of review of the PTAB’s AIA trial decisions. Merck & Cie, et al. v. Gnosis S.P.A. et al.,__S.Ct. __, 2016 WL 4014485 (Oct. 11, 2016). We covered the Federal Circuit decision at issue here.
Continue Reading Supreme Court Declines to Weigh in on AIA Issues
Patent Office Proposes to Increase AIA Trial Fees
In the October 3, 2016, Federal Register, the Patent Office published a notice of proposed rulemaking to adjust various fees the Office charges for its services, including 18% to 56% increases for AIA trial fees (as shown below).
According to the notice, the Patent Trial and Appeal Board has received more than 4,700 AIA trial petitions since 2012, and it received over 1,900 in the fiscal year that ended September 30, 2016. In setting the fee structure for administering those trials, the Patent Office had to estimate the demand and workload based on limited data from its administration of inter partes reexamination and interference proceedings.
Continue Reading Patent Office Proposes to Increase AIA Trial Fees
Federal Circuit Suggest Expansive Interpretation of “Adapted to” in Affirming CBM Cancellation
In a recent non-precedential decision, the Federal Circuit suggested a very expansive interpretation for the oft-used phrase “adapted to.” Relying upon the prosecution history, the Federal Circuit determined that the Board correctly construed claims relating to interactive video programming, and on that basis affirmed the Board’s decision that the claims were anticipated by a prior art reference. Intertainer, Inc. v. Hulu, LLC, No. 2015-2065 (Fed. Cir. Sept. 26, 2016) (non-precedential).Continue Reading Federal Circuit Suggest Expansive Interpretation of “Adapted to” in Affirming CBM Cancellation
PTAB Finds Motivation to Combine References, but Cancellation Comes Too Late for More than 200 Defendants
On July 6, 2016, the PTAB cancelled claims in a patent which had bedeviled more than 250 named defendants in litigation dating back to 2008. The list of defendants reads like a Who’s Who of financial and commercial businesses, including the nation’s most prominent banks, credit card companies, online stock traders, e-Commerce retailers, cable and telecommunications companies, airlines, and even all twelve of the nation’s Federal Reserve banks. Any plans the patent owner had to continue its siege of these vast tracts of economic activity were brought to a halt by the PTAB’s final written decision in MasterCard International, Inc. v. Stambler, Case CBM2015-00044, Paper 32 (PTAB 2016), which found that the petitioner, MasterCard, had proven the challenged claims were anticipated by and/or obvious over prior art.
Continue Reading PTAB Finds Motivation to Combine References, but Cancellation Comes Too Late for More than 200 Defendants
PTAB Standard for Qualifying CBM Patent Reviews is Now Set
The AIA provides for the post-grant review of “covered business method patents,” which are defined as:
a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.
AIA §18(d)(1). The PTAB was left to its own devices in the absence of meaningful legislative history to address how broadly this language should be read.
Continue Reading PTAB Standard for Qualifying CBM Patent Reviews is Now Set
For CBM Standing, Is “Incidental To” a Financial Product or Service Enough?
If a patented mobile phone app can locate a nearby ATM machine, are the claims of that patent subject to CBM review because ATMs are used in financial transactions? What if the claim could cover a business entity that, incidentally, might also push advertisements to a mobile phone? Is it enough that a claim is merely “incidental to” a financial product or service, or, must a claim actually require that something be used to practice, administer, or manage a financial product or service? These are central questions currently under consideration at the CAFC in Unwired Planet LLC v. Google Inc., Nos. 15-1810 and 15-1812 (audio recordings). The PTAB found these facts sufficiently supported CBM review. However, during recent oral arguments on appeal, the judges of the CAFC panel seemed skeptical, focusing on the text of the underlying statute and its implementing rules.
Continue Reading For CBM Standing, Is “Incidental To” a Financial Product or Service Enough?
PTAB Concludes Database Patent Claims Are Ineligible under Section 101 Despite Enfish
Notwithstanding the Federal Circuit’s Enfish warning that “we do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract,” in Informatica Corp. v. Protegrity Corp., the PTAB cancelled claims 1-8 and 18-53 of U.S. Patent No. 6,321,201 under Section 101 because the claims relating to a data security system for databases were directed at an abstract idea and recite ineligible subject matter. Informatica Corp. v. Protegrity Corp., CBM2015-00021, Paper 38, (“Dec”) (PTAB May 31, 2016); Enfish, LLC v. Microsoft Corp., No. 2015-1244, Slip Op. at 11 (Fed. Cir. May 12, 2016). The Board also determined that some of these claims were also unpatentable under Section 103. Focusing on the Board’s decision regarding Section 101, the Board held: (1) the ’201 patent was a covered business method patent, (2) Section 101 is a proper ground for review for covered business methods patents, and (3) the claims were directed at an abstract idea.
Continue Reading PTAB Concludes Database Patent Claims Are Ineligible under Section 101 Despite Enfish
Motion(s) to Amend (Almost Always) Denied!
Responsive to public interest in whether it is too difficult for Patent Owners to amend claims during PTAB Trials, the Patent Office recently published a study providing aggregate data about motions to amend filed with the PTAB since its inception in 2013. The study, which was published by PTAB Chief Judge Nathan Kelly in the May 9, 2016 edition of the USPTO’s “Director’s Forum Blog,” confirms what the public, and certainly the patent bar, has suspected since the AIA created the PTAB to handle IPR, CBM, and PGR Trials: (1) that Patent Owners very rarely filed motions to amend, and (2) motions to amend, when filed, are rarely successful.
Continue Reading Motion(s) to Amend (Almost Always) Denied!
No Appellate Review, No Matter: District Court Invalidates Patent After the PTAB Denies CBM Review
NRT Technology Corporation was not successful in petitioning the PTAB to institute CBM review of U.S. Patent No. 6,081,792, but was successful in moving a district court to dismiss an infringement action concerning the same patent on the basis that the patent claims ineligible (abstract) subject matter. Global Cash Access, Inc. v. NRT Tech. Corp., Case No. 2:15-cv-00822 (D. Nev. Mar. 25, 2016) (Order) (granting motion to dismiss). The apparently inconsistent PTAB and district court dispositions will no doubt encourage accused-infringers/putative-petitioners who do not succeed in initiating AIA (trial) review under a low evidentiary burden to try to invalidate the patent in district court under a higher evidentiary standard. Further, these decisions collectively demonstrate how a PTAB’s institution decision denying AIA review can be, without an appeal, effectively nullified by a parallel or later court proceeding.
Continue Reading No Appellate Review, No Matter: District Court Invalidates Patent After the PTAB Denies CBM Review