MESSAGE FROM JANET GONGOLA, SENIOR ADVISOR: USPTO Timely Releases Two New AIA Reports on Virtual Marking and the Satellite Offices

The USPTO is pleased to announce the release of two reports mandated by Congress under the AIA.  Both reports were due in September 2014, and the agency issued each on time.

Satellite Office Report

Today, on its due date of September 30, 2014, the USPTO submitted the Satellite Office Report to Congress.  The agency explained the criteria used to select the location of its four satellite offices in Detroit, Denver, Dallas, and the Silicon Valley as well as the process and timing to build out those offices.

The Report also delved into the achievements of the satellite offices, including their impact on the patent application backlog and pendency, examiner recruitment and retention, and stakeholder outreach.  The USPTO reported that examiners in the satellite offices are contributing to a reduction of the patent application backlog and pendency equal to the examiners in Alexandria.  The Office likewise reported that examiner recruitment and retention in the satellite offices of Detroit and Denver (the locations where permanent offices currently exist) match that for examiners in Alexandria. 

Finally, the agency detailed numerous and varied stakeholder outreach events in each geographic location ranging from Saturday Seminars to educate stakeholders about the patent system to meetings with industries to spur innovation and the U.S. economy.

Virtual Marking Report

Two weeks ago, on September 16, 2014, the agency submitted its Virtual Marking Report to Congress.  Under the AIA, an article may be marked with the word "patent" or abbreviation "pat." followed by a website address where the article is associated with the relevant protective patents.   The Office solicited public input through a Federal Register Notice in preparing this Report and received nine comments in response.  The agency drew from these comments in preparing the Report. 

The agency first addressed the effectiveness of virtual marking as an alternative to physically marking the article with the patent information, concluding that virtual marking is serving its congressionally-intended purpose of making it easier for manufacturers to mark small-sized articles and keep patent information current on articles without having to re-tool production equipment or create new molds.

The Report next addressed whether virtual marking has limited or improved the public's access to patent information along with possible legal issues that arise from virtual marking.  Because there has not been any litigation involving the virtual marking statutory provision yet, the USPTO noted that follow-up may be needed here.

Lastly, the agency considered deficiencies in constructive notice arising from virtual marking as compared with physical marking, not identifying any significant ones, though pointing to aspects to watch going forward.

The Virtual Marking and Satellite Office Reports are available here: http://www.uspto.gov/aia_implementation/aia_studies_reports.jsp.

Posted at 10:27AM Sep 30, 2014 in Studies and Reports  | 

Message From Administrative Patent Judges Jacqueline Bonilla and Sheridan Snedden: Routine and Additional Discovery in AIA Trial Proceedings: What Is the Difference?

The Leahy-Smith America Invents Act (“AIA”) created administrative trial proceedings to be conducted by the Patent Trial and Appeal Board (“PTAB” or “Board”) as a cost-effective alternative to litigation. Consistent with statutory provisions and legislative intent of the AIA, strong public policy exists to limit discovery in AIA proceedings. Thus, the scope of discovery in AIA trials before the Board differs significantly from the scope of discovery generally available under the Federal Rules of Civil Procedure in district court litigation.

AIA proceedings potentially involve three categories of limited discovery: (1) mandatory initial disclosures; (2) routine discovery; and (3) additional discovery. 37 C.F.R. § 42.51. To provide flexibility, the Board’s rules allow parties to agree regarding (1) and (3). In fact, beyond certain routine discovery that parties must provide to each other, the Board encourages parties to agree on discovery whenever possible.

This article focuses on routine and additional discovery, the two most common of the three categories. Stay tuned for an upcoming article on mandatory initial disclosures, an option used less often so far, but one that allows parties to agree about the automatic discovery of certain information upon institution of a trial.

Routine Discovery

Routine discovery in AIA trials corresponds to evidence and information that a party must provide to the other side. Routine discovery is self-executing. BlackBerry Corp. et al. v. Wi-Lan USA Inc., IPR2013-00126, Paper 15, 2. Thus, there is no need for a party to file a motion for “routine discovery” with the Board, or serve a request for routine discovery on a party—parties have the burden to come forward and provide such material. Id.; 37 C.F.R. § 42.51(b)(1); Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 19, 2.

Routine discovery includes: (i) any exhibit cited in a paper or in testimony in the case; (ii) cross examination of affidavit testimony; and (iii) relevant information that is inconsistent with a position advanced by a party, which must be served concurrently with the filing of documents or things that contain the inconsistency. 37 C.F.R. § 42.51(b)(1).

In relation to (i), a party must serve such exhibits at the same time it serves a paper or testimony citing them, unless the exhibits were previously submitted, both parties agree, or the Board orders otherwise. Id. The rule regarding (i) does not require, however, that a party create materials or provide materials not cited. See Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions (“Trial Rules”), 77 Fed. Reg. 48,612, 48,622 (Aug. 14, 2012). In addition, (i) relates to evidence actually cited in a paper or testimony, not the materials that a party or witness relies upon when preparing the paper or testimony. BlackBerry, IPR2013-00126, Paper 15, 2; see also Corning Inc. v. DSM IP Assets B.V., IPR2013-00043, Paper 27, 3 (stating routine discovery requirements do not require that “all the underlying data and lab notebooks be produced” with a paper that references an experiment).

In relation to (ii), cross-examination of a declarant or affiant is permitted as routine discovery. 37 C.F.R. § 42.51(b)(1)(ii). As noted in the Office Patent Trial Practice Guide, a party relying on a witness’s testimony by declaration or affidavit should arrange to make that witness available for cross-examination. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,761 (Aug. 14, 2012). Normally, the burden and expense of producing a witness for cross-examination falls on the party presenting the witness. Id.

In relation to (iii), the requirement for information inconsistent with a position advanced does not include discovery of material protected by attorney-client privilege or attorney work product immunity. 37 C.F.R. § 42.51(b)(1)(iii). Moreover, routine discovery under (iii) “is narrowly directed to specific information known to the responding party to be inconsistent with a position advanced . . . , and not broadly directed to any subject area in general within which the requesting party hopes to discover such inconsistent information.” Garmin Int'l Inc. et al. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26, 3-4.    

Additional Discovery and Five Garmin Factors

Beyond routine discovery, parties may agree to provide additional discovery. Otherwise, a party must request additional discovery. 37 C.F.R. § 42.51(b)(2)(i). The AIA legislative history makes clear that requested additional discovery should be confined to “particular limited situations, such as minor discovery that PTO finds to be routinely useful, or to discovery that is justified by the special circumstances of the case.” 154 Cong. Rec. S9988-89 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl). In light of this history and statutory deadlines, the Board must be conservative in authorizing additional discovery. See id. at S9989.

The Board applies an “interests of justice” standard when deciding whether to grant additional discovery in inter partes reviews (IPRs), and a “good cause” standard in post-grant reviews (PGRs), including covered business method patent reviews (CBMs). 35 U.S.C. § 316(a)(5); § 326(a)(5); 37 C.F.R. § 42.51(b)(2); § 42.224(a). On balance, the interests of justice standard is slightly higher than the good cause standard. This difference reflects the more limited scope of issues raised in IPR petitions, i.e., grounds that could be raised under §§ 102 or 103 based on patents or printed publications, as compared with PGR petitions. 35 U.S.C. § 311(b). Notwithstanding the two standards, however, the same principles caution against overly broad discovery.

As outlined in the Garmin case, the Board typically weighs five factors when considering whether additional discovery in an IPR is “necessary in the interest of justice.”

1. More Than A Possibility And Mere Allegation. The mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient. Thus, the party requesting discovery already should be in possession of a threshold amount of evidence or reasoning tending to show beyond speculation that something useful will be uncovered. “Useful” does not mean merely “relevant” or “admissible,” but rather means favorable in substantive value to a contention of the party moving for discovery.
2. Litigation Positions And Underlying Basis. Asking for the other party’s litigation positions and the underlying basis for those positions is not necessarily in the interest of justice.
3. Ability To Generate Equivalent Information By Other Means. Information a party can reasonably figure out, generate, obtain, or assemble without a discovery request would not be in the interest of justice.
4. Easily Understandable Instructions. The requests themselves should be easily understandable. For example, ten pages of complex instructions is prima facie unclear.
5. Requests Not Overly Burdensome To Answer. The Board considers financial burden, burden on human resources, and burden on meeting the time schedule of the review. Requests should be sensible and responsibly tailored according to a genuine need.

Garmin, IPR2012-00001, Paper 26, 6-7; see also id. at Paper 20.

Other Board cases have addressed those five factors when considering whether to grant additional discovery in IPRs in relation to issues such as secondary considerations in an obviousness analysis, prior art disclosures, expert testimony, and real party-in-interest or privity. Board decisions providing guidance on these issues include the following:

• Corning Inc. v. DSM IP Assets B.V., IPR2013-00043, Paper 27
  • granting a request for laboratory notebooks, stating that details of procedures were per se useful when a petitioner cited expert testimony that relied upon those details to demonstrate unpatentability (first Garmin factor weighed in favor of discovery, and other factors did not disfavor discovery)
  • denying a request for samples because party did not show that request was not overly burdensome (fifth Garmin factor) or could not get information through documents otherwise produced (third Garmin factor)
• Apple Inc. v. Achates Reference Publ'g, Inc., IPR2013-00080, Paper 66 (granting additional discovery regarding e-mail communications between expert witnesses relied upon by those witnesses as a basis for their opinions)
• RPX Corp. v. Virnetx Inc., IPR2014-00171, Paper 25 (granting additional discovery regarding real party-in-interest and privity issues)
• Arris Group, Inc. v. C-Cation Techs., LLC, IPR2014-00746, Paper 15 (granting additional discovery regarding an indemnification agreement as it relates to privity)
• Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper 32 (denying additional discovery relevant to commercial success)
  • stating that while “a conclusive showing of nexus is not necessary at this stage, some showing of relevance is necessary,” especially where the claimed feature “is itself not a product but one feature of a complex [] product”) (first Garmin factor)
  • stating that certain requested information seemed “publicly available on the Internet or elsewhere” (third Garmin factor)
  • noting that certain requests were not time-limited, and were imprecise, unfocused, and unduly burdensome (fifth Garmin factor)
• Palo Alto Networks, Inc. v. Juniper Networks, Inc., IPR2013-00369, Paper 36 (denying additional discovery relating to copying, discussing nexus in relation to first Garmin factor, and that request appeared “not focused, overly broad, and unduly burdensome” under fifth Garmin factor)
• Schott Gemtron Corp. v. SSW Holding Co., Inc., IPR2013-00358, Paper 43 (denying motion for additional discovery regarding commercial success)
  • request did not provide a threshold amount of evidence of (1) sales allegedly amounting to commercial success, or (2) alleged nexus between the claimed invention and commercial success (first Garmin factor)
  • denying requests as overly burdensome (fifth Garmin factor) because some were “not limited to” specific requested information, some requested documents “sufficient to show” something, without explaining “sufficient,” and some requested documents related to “forecasted” sales, not just actual sales, without explaining relevance to commercial success
  • delay of request weighed against granting motion

Notwithstanding the slightly lower standard in PGRs and CBMs, the Board considers the same five Garmin factors used for IPRs when addressing whether additional discovery is necessary for “good cause,” and “limited to evidence directly related to factual assertions” advanced by a party. 37 C.F.R. § 42.224; Bloomberg Inc. et al. v. Markets-Alert Pty Ltd, CBM2013-00005, Paper 32.

For example, as in an IPR, in showing the first Garmin factor, a moving party must provide a specific factual reason for expecting reasonably that the discovery will be “useful,” where “useful” means favorable in substantive value to a contention. Bloomberg, CBM2013-00005, Paper 32, 5; see also Schott Gemtron, IPR2013-00358, Paper 43, 4.

Board decisions providing guidance on the application of the five Garmin factors in a CBM include:

• Bloomberg Inc. et al. v. Markets-Alert Pty Ltd, CBM2013-00005, Paper 32
  • granting a request for documents and things “specific and tailored narrowly, seeking information from one individual that is related to a single declaration on the issues raised . . . in [the] Petition”
  • denying other requests because arguments were speculative and did not provide sufficient factual reason to demonstrate that something “useful” would be uncovered (first Garmin factor), requestor could generate information by other means (third Garmin factor), requests were unduly broad and burdensome (fifth Garmin factor)
• SAP America, Inc. v. Versata Dev. Group, Inc., CBM2012-00001, Paper 24 (granting a request for five specific documents that were not burdensome to produce (fifth Garmin factor), where producing party did not identify prejudice other than alleged lack of relevance)

Benefits of limited discovery include lowering costs, minimizing complexity, and shortening periods required for dispute resolution. The PTAB also must address these considerations in light of the one-year statutory deadline (absent limited exceptions) for completing AIA trials. Notwithstanding necessary limits, however, the parties may achieve additional flexibility by agreeing to discovery, bypassing the need for the Board to intervene and address such considerations.

Posted at 10:01AM Sep 30, 2014 in Implementation Activities/Roadshows  | 

USPTO Seeking Written Comments on Virtual Marking for AIA Report

The AIA requires the USPTO to report on the effectiveness of virtual marking as an alternative to physically marking articles with patent information.  The AIA contained a provision permitting a virtual mark as a means of providing public notice that an article is subject to patent protection in lieu of a physical mark on the patented article.  The AIA mandates the USPTO to complete the report for Congress by September 16, 2014.

To fulfill its AIA reporting requirement, the Office is seeking public comment on specific aspects of virtual marking:

•  whether virtual marking is effective for giving public notice;
•  whether virtual marking has limited or improved the public’s ability to access patent information;
•  whether and what legal issues arise from virtual marking; and
•  whether virtual marking has any deficiencies. 

Comments on these topics, along with any other issues or experiences regarding virtual marking, may be emailed to virtualmarking@uspto.gov by July 16, 2014.  More information about the Virtual Marking Report is available here = http://www.gpo.gov/fdsys/pkg/FR-2014-06-16/pdf/2014-14044.pdf. 

Posted at 04:16PM Jul 07, 2014 in Congressional Testimony  | 

Message from Scott Boalick, Acting Vice Chief Judge: PTAB AIA Trial Roundtables Are in Full Swing and There is Still Time to Attend One in a City Near You

The PTAB AIA Trial Roundtables are going strong with six down and two to go. The Board started the roundtables in mid-April at the USPTO headquarters in Alexandria and since has visited New York City, Chicago, Detroit, Silicon Valley, and Seattle. This week, the Board winds down with the last two roundtables in Dallas on May 6 and Denver on May 8.

The Board is conducting the roundtables for two purposes. First, the Board aims to educate stakeholders about the AIA trials. The Board has reviewed all trial filings made in the 18 months since the proceedings started and has many helpful lessons learned to share. For example, during each roundtable event, the Board conducts a mock conference call focused on motions for a claim amendment and for additional discovery to showcase how to succeed on these types of motions.

Second, the Board is eager to collect your feedback about the AIA trials. In particular, the Board is interested in your suggestions for how to improve the trial proceedings to solidify them as a faster and less expensive alternative to district court litigation for challenging patent validity. Stakeholders in Alexandria, New York City, Chicago, Detroit, Silicon Valley, and Seattle offered many thoughtful comments, and consistent themes are emerging on areas where changes may be necessary. The Board is compiling these suggestions and aims to carefully consider each one after the roundtables conclude.

The PTAB Roundtables likewise feature a panel discussion with top-notch AIA trial practitioners who have made many AIA trial filings. Panelists have included Peter Thurlow, Andrew Sommer, Erin Dunston, and Scott McKeown in Alexandria; Erika Arner, Rob Sterne, Vin McGreary, and Sharon Israel in New York City; Herb Hart, Kevin Noonan, Dorothy Whealan, and Tim Baumann in Chicago; Jon Beaupre, Brad Pedersen, Kara Stoll, and Karl Renner in Detroit; Kevin Greenleaf, Matt Smith, Dianna Devore, Michael Rosato, and Wayne Sobon in Silicon Valley; and John Vandenberg, Don Coulman, Brandon Stallman, and Rich Black in Seattle. These practitioners have shared their experiences and strategies for navigating the AIA trial waters. They also have fielded many probing questions about each stage of the trial process from petition filing to briefing to oral hearing tips to estoppel following the final written decision.

The PTAB is pleased to have received a strong stakeholder turn-out so far, and thanks the patent community for supporting the Roundtables. More than 600 stakeholders have joined in person, and more than 200 viewed the live webcast. If you want to learn and/or share feedback about the AIA trials or engage with the talented practitioner panelists, the PTAB encourages you to attend one of the two remaining roundtables in Dallas or Denver. The schedule with venue locations and directions is available on the PTAB Roundtable micro-site. Also, the last roundtable on May 8 will be webcast live from Denver; viewing instruction and access information can be found on the PTAB Roundtable micro-site.

Posted at 04:02PM May 05, 2014 in Implementation Activities/Roadshows  | 

USPTO Message From PTAB: How to Make Successful Claim Amendments in an AIA Trial Proceeding

In an AIA trial proceeding, such as an inter partes review (IPR), post-grant review (PGR), or a covered business method patent review (CBM), a patent owner may move to amend the claims of the challenged patent.  The patent owner should not, however, approach the amendment process in an AIA trial proceeding like the amendment process to overcome an Office rejection filed during the prosecution of a patent application or during a reexamination or reissue proceeding. 

During the prosecution of a patent application or during a reexamination or reissue proceeding, an applicant has a right to amend claims prior to a final Office action.  Once an amendment is made, the burden then falls on the Examiner to show that the amended claims are unpatentable.  In doing so, the Examiner undertakes a further prior art search, taking into account the added limitations.  These aspects are different in an IPR, PGR, or CBM proceeding.

First, per the statute, a patent owner in an IPR, PGR, or CBM proceeding only may “move” to amend the claims.  The proposed amendment is not entered automatically as it would be during prosecution of a patent application or during a reexamination or reissue proceeding.

Second, the patent owner in an IPR, PGR, or CBM proceeding bears the burden to show that the proposed substitute claims are patentable.  The statute prescribes that the patent owner must move to amend the claims, and in so doing, as the moving party bears the burden to show entitlement to the relief requested by motion.  An applicant bears no such burden during the prosecution of a patent application.  Likewise, a patent owner bears no such burden due a reexamination or resissue proceeding.  Rather, the Examiner has the burden to establish the unpatentability of any claim during examination, reexamination, and reissue.   

Finally, the Board in an IPR, PGR, or CBM proceeding conducts no prior art search and performs no examination.  Instead, the Board’s grant of a motion to amend operates to add the proposed substitute claims directly to an issued patent without a search or examination. 

To succeed on a motion to amend in an IPR, PGR, or CBM proceeding given these distinguishing aspects, a patent owner should, with respect to each claim feature added by amendment, discuss what it knows what was previously known about the feature and about the level of ordinary skill in the art.  A patent owner does not need to address individually all the items of prior art known to the patent owner.  Nor does a patent owner need to address all of the prior art in existence at the time of filing.  Rather, the patent owner should explain why the claim feature added by amendment, in combination with all the other features of the claim, would not have been obvious to a person of ordinary skill in the art at the time of the invention, in light of the knowledge and skill level of the person of ordinary skill in the art.

Additionally, a patent owner must be mindful that it is not sufficient to establish that its amended claims are patentable over the prior art applied by the petitioner.  The petitioner did not select the prior art identified in the petition with knowledge of patent owner’s proposed substitute claims.  In fact, the references applied by the petitioner reasonably are not expected to be the closest prior art regarding the added feature in the amended claims.  Thus, while it is necessary for the patent owner to distinguish its amended claims over the prior art applied by the petitioner, a patent owner should not limit its motion to amend to that art.  Demonstrating patentable distinction over the prior art applied by the petitioner does not establish the overall patentability of the proposed claims sufficient to have them added to the involved patent.

Finally, a statement by the patent owner that the closest prior art it knows about was applied by the petitioner in the petition can be helpful if the supporting basis is explained in and established by the motion to amend.  A conclusory statement to this effect would be of questionable value because its meaning depends on the patent owner’s subjective focus when making the statement. 

Posted at 03:57PM May 05, 2014 in Congressional Testimony  | 

USPTO to Host First-Inventor-to-File Forum on April 1, 2014 (rescheduled from Monday, March 17, 2014)

The United States Patent and Trademark Office (USPTO) will host a public forum to discuss the first-inventor-to-file (FITF) provisions of the America Invents Act (AIA) on the first anniversary of the FITF implementation. The forum will be held on Tuesday, April 1, 2014, at the USPTO headquarters, Madison Auditorium, in Alexandria, Virginia from 12:30 to 5 pm ET. Members of the public are invited to attend in person or via webcast (access information below).

The forum is intended to bring stakeholders together with USPTO subject matter experts to discuss the FITF provisions. It will begin with a thirty-minute informal meet-and-greet session, allowing participants to chat with the experts, followed by an informational program.

Pre-registration is not required; seating is first-come, first-served.  CLE is not available. 
Webcast access instructions:

Topic: First Inventor to File First Anniversary Public Forum
Host: USPTO WebEx
Date and Time:
Tuesday, April 1, 2014 12:30 pm, Eastern Daylight Time (New York, GMT-04:00)
Event number: 992 988 777
Event password: 12345

Event address for attendees:  https://uspto-events.webex.com/uspto-events/onstage/g.php?t=a&d=992988777

Posted at 03:06PM Mar 22, 2014 in Implementation Activities/Roadshows  | 

USPTO to Host First-Inventor-to-File Forum on Monday, March 17, 2014

Posted at 04:08PM Feb 27, 2014 in Implementation Activities/Roadshows  | 

Message From Administrative Patent Judges Sheridan Snedden And Jacqueline Bonilla: Deep Dive Into A Patent Owner Preliminary Response In An Inter Partes Review Proceeding Before The Patent Trial And Appeal Board

Inter partes review (IPR) proceeding provides an opportunity to challenge the patentability of claims in an issued patent for anticipation or obviousness under 35 U.S.C. §§ 102 and 103, respectively, based on prior art patents or printed publications.  An IPR proceeding is conducted before the Patent Trial and Appeal Board and is divided into two stages:  (i) a preliminary stage; and (ii) a trial stage.  The preliminary stage begins with the filing of a petition to institute a trial.  To proceed to the trial stage, a petition must demonstrate that there is a reasonable likelihood that the petitioner would prevail as to at least one of the challenged claims.  A patent owner has a waivable right to file a preliminary response to the petition setting forth reasons why trial should not be instituted.  The preliminary stage ends with a decision from the Board on whether to institute a trial. 

A preliminary response provides a patent owner with an opportunity to be heard before the Board decides whether to institute trial.  If the petition does not meet the standard set for instituting a trial, the petition will be denied, regardless of a preliminary response.  That said, a preliminary response may help the Board when deciding whether to institute a trial.  To provide the most benefit, a preliminary response should identify clear procedural and substantive reasons why the petition should be denied.  To follow is a discussion of potential arguments that a patent owner might raise in a preliminary response, if appropriate, to help the Board’s consideration. 

Petitioner Is Statutorily Barred from Pursuing an IPR

A preliminary response may challenge the standing of a petitioner under 35 U.S.C. 315. 

Under 35 U.S.C. 315(a)(1), a patent owner may provide evidence that the petitioner filed a civil action challenging the validity of a claim of the patent, e.g., in a declaratory judgment action in district court, prior to filing the petition.  Such action by the petitioner bars the institution of an IPR under 35 U.S.C. § 315(a)(1).  Board decisions providing guidance on the application of § 315(a)(1) include the following:

• Anova Food, LLC v. Sandau, IPR2013-00114, Paper No. 17 (PTAB) (a civil action for a declaratory judgment dismissed with prejudice filed by a predecessor-in-interest to the petitioner bars an IPR under § 315(a)(1)).
• Cyanotech Corporation v. The Board Of Trustees of the University of Illinois, IPR2013-00401, Paper No. 30 (PTAB) (a civil action involuntarily dismissed without prejudice does not bar an IPR under § 315(a)(1)).
• Clio v. The Procter and Gamble Co., IPR2013-00438, Paper No. 9 (PTAB) (a civil action voluntarily dismissed without prejudice does not bar an IPR under § 315(a)(1)).
• Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper No. 24 (PTAB) (a civil action for a declaratory judgment of non-infringement is not a civil action challenging the validity of a patent barring an IPR under § 315(a)(1)).

Alternatively, a patent owner may provide evidence that the petitioner is barred from challenging the patent owner’s claims under 35 U.S.C. § 315(b).  As outlined in § 315(b), the Board may not institute an IPR if the petition was filed more than one year after the petitioner, real party in interest, or a privy, was served with an infringement complaint.  Board decisions providing guidance on the application of § 315(b) include the following:

• Macauto U.S.A. v. BOS GmbH & KG, IPR2012-00004, Paper No. 18 (PTAB) (a dismissal without prejudice nullifies the effect of service for purposes of § 315(b)).
• St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., IPR2013-00258, Paper No. 29 (PTAB) (a counterclaim is a “complaint alleging infringement of the patent” within the meaning of § 315(b)).
• Accord Healthcare v. Eli Lilly and Co., IPR2013-00356, Paper No. 13 (PTAB) (service of a second complaint does not nullify the effect of a first served complaint for purposes of § 315(b)).
• BioDelivery Sciences Int’l, Inc. v. MonoSol RX, LLC, IPR2013-00315, Paper No. 31 (PTAB) (challenged claims amended by a reexamination certificate issued after service of the complaint does not affect the “date on which the petitioner . . . is served with a complaint alleging infringement of the patent” under § 315(b)). 

Highlight Weaknesses in Petitioner’s Case of Unpatentability

The Board may not authorize a trial where the information presented in the petition fails to meet the requisite standard for instituting a trial—that is, fails to establish a reasonable likelihood that the petitioner would prevail with respect to at least one of the challenged claim.  35 U.S.C. § 314(a).  Thus, it is helpful to the Board if a preliminary response explains carefully the weakest parts of petitioner’s unpatentability positions.  For example, the preliminary response may include a detailed discussion or technical analysis relating to:

• How any asserted references are not, in fact, prior art;
• How asserted references lack at least one material limitation in one or more challenged claims; or
• How an asserted reference teaches away from a combination of elements, as advocated by petitioner.  See, e.g., Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., IPR2013-00132, Paper No. 9 (PTAB). 

Petitioner’s Claim Construction is Improper

In an IPR proceeding, the Board construes claim terms according to their broadest reasonable construction in light of the specification of the patent in which they appear.  37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide (“Trial Practice Guide”), 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012).  Using this standard, a preliminary response may help the Board by carefully explaining claim construction positions.  The patent owner may wish to point to the specification, dictionary definitions, as well as logic in relation to the claims as a whole, to support a conclusion that petitioner’s claim construction is, for example, unreasonably broad.  In interpreting claims, however, one must take care to note the fine line between interpreting claims in light of the specification and improperly reading limitations into the claims from the specification.  Absent claim language carrying a clear narrow meaning, the Board will not limit a claim based on the specification unless it expressly disclaims the broader definition.  See, e.g., Ariosa Diagnostics, Inc. v. Verinata Health, Inc., IPR2013-00277, Paper No. 10 (PTAB).

Petition Contains Prior Art or Arguments Were Previously Presented to the Office.

Under 35 U.S.C. § 325(d), a preliminary response may wish to address whether the same or substantially the same prior art and arguments were previously presented to the Office.  Board decisions providing guidance on the application of § 325(d) include the following:

• SAS Institute, Inc. v. Complementsoft, LLC, IPR2013-00581, Paper No. 15 (PTAB) (denying a petition as to grounds based upon substantially the same prior art and arguments as set forth in a prior IPR petition).
• Oracle Corporation v. Clouding IP, LLC, IPR2013-00100, Paper No. 8 (PTAB) (granting a petition where new arguments and supporting evidence were presented that shed a different light on references previously considered during prosecution).

Petition Fails To Identify All Real Parties-in-Interest

Under 35 U.S.C. § 312(a)(2) and 37 CFR § 42.8, an IPR petition must identify all real parties-in-interest or privies.  A preliminary response may help the Board by pointing out how the petition fails to identify all real parties-in-interest.  The Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party-in-interest.  Whether a non-party is a “real party-in-interest” or “privy” is a “highly fact-dependent question” that takes into account how courts have used the phrases generally to “describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion.”  Trial Practice Guide, 77 Fed. Reg. at 48759.  One consideration is whether a non-party exercises, or could have exercised, control over a petitioner’s participation in an IPR proceeding.  Id. at 48759-60, 48695.  Other considerations may include whether a non-party, in conjunction with control, funds and directs the proceeding.  Id. at 48760.  Board decisions providing guidance on real party-in-interest or privy include the following:

• Butamax™  Advanced Biofuels LLC v. Gevo, Inc., IPR2013-00214, Paper No. 11 (PTAB)(“‘common interest among litigation defendants seeking to invalidate or defend against enforcement of a patent . . . does not translate ipso facto into each defendant being a real party in interest where a request for reexamination is filed by only one of the defendants in the litigation’”) (citations omitted). 
• Chimei Innolux Corporation v. Semiconductor Energy Laboratory Co., Ltd., IPR2013-00068, Paper No. 7 (PTAB) (patent owner failed to provide persuasive evidence that each co-defendant in a related litigation exercised control and provided funding of the IPR petition).

Supporting Evidence for the Preliminary Response

The preliminary response may cite evidence supporting the patent owner’s contentions.  Such evidence may include previously existing declarations, trial testimony, deposition testimony, and expert reports.  A preliminary response may not, however, present new testimonial evidence (i.e., testimonial evidence prepared specifically for the purpose of the IPR proceeding) without authorization from the Board.  Additionally, flooding the Board with evidence in a preliminary response is not helpful.  Rather, a preliminary response should aid the Board in navigating evidence of record cleanly and quickly.  

Posted at 11:39AM Feb 24, 2014 in Congressional Testimony  | 

Message From Janet Gongola, Patent Reform Coordinator: Update On The Frequency, Compliance, And Content Of Preissuance Submissions

Since the preissuance submission provision of the AIA went into effect seventeen months ago, members of the public have been able to submit prior art into another’s pending patent application if certain minimal requirements are satisfied.  The Office has received a total of 1,414 preissuance submissions (also referred as “third-party submissions”) as of January 17, 2014.  The submissions have arrived in all technology centers with the largest number in TC1700, which includes areas related to mechanical engineering, and the fewest in TC 2400, which includes areas related to electrical engineering.  Figure 1 below shows the distribution of submissions across technology centers. 

Figure 1

Proper Preissuance Submissions

Most third-party submissions received as of January 17, 2014, have met the eligibility requirements and been categorized by the Office as proper.  Figure 2 below shows the percentage of proper and improper submissions, and Figure 3 below shows the proper submissions categorized by technology areas.  The most common reasons for non-compliance relate to a failure to meet the timing, concise description of relevance, and signature requirements.  Statistics show, however, that the number of improper submissions is leveling off, and in turn, that the number of proper submissions is rapidly increasing.

Figure 2

Figure 3

Distribution of Documents in Proper Preissuance Submissions

In the total number of proper preissuance submissions received as of January 17, 2014, the public presented 3,339 documents for consideration by the Office.  Figure 4 below shows the submitted documents categorized by type.

Figure 4

Third-Party Submission Usage by Examiners

When the Office receives a compliant preissuance submission in a particular application, the examiner must consider the submission as a matter of course.  For the submissions made as of January 17, 2014, examiners have relied upon the prior art contained in them to make a rejection in 12.50% of the impacted applications.  Figure 5 below depicts all the applications where a rejection issued after a proper submission was received.  Additionally, in the applications where rejections were made based upon the art contained in a preissuance submission, the examiner rejected 50% of the time for obviousness under 35 U.S.C. 103; 18% of the time for anticipation under 35 U.S.C. 102; and the remainder of the time for both obviousness and anticipation.  Figure 6 below features the applications having rejections using third-party submissions broken down by the type of rejection under the statute.  Lastly, with respect to the type of rejection made after receipt of a proper third-party submission, most were First Actions on the Merits followed by Final Rejections.

Figure 5

Figure 6

Crowdsourcing

The public has shown interest in locating potential prior art for submission to the Office by utilizing crowdsourcing Web sites, such as Ask Patents by Stack Exchange.  Indeed, members of the public have been posting requests for prior art in published applications on these sites.  The Office feels confident that the number of proper third-party submissions will continue to increase as users become more familiar with the ability to make such submissions as well as the resources available to locate prior art such as crowdsourcing.  The Office will continue to monitor the number third-party submissions and periodically update statistics on these filings.

>> Link to data displayed in charts above.

Posted at 11:34AM Feb 24, 2014 in Studies and Reports  | 

Message From Janet Gongola, Patent Reform Coordinator: Request for Public Comments on Methods to Study Diversity of Patent Applicants

The America Invents Act requires the USPTO to establish methods for studying the diversity of patent applicants.  In March 2012, the USPTO mapped out an step-wise approach for doing so.   As a first step, we shared our public USPTO patent data with the Census Bureau to obtain demographic information for patent applicants who previously filed applications with the Office during a select time period.

Now, as a second step, the agency is seeking public feedback about how effective different approaches would be for collecting diversity information from patent applicants in the future and what information would be appropriate to collect.  Written comments are due by January 31, 2014.  To read the USPTO’s full request for information, including how to provide comments, click here.

Once the agency has reviewed all input collected from the first match with Census data and the request for information, we will decide what further steps to take to be able to accurately describe patent applicant diversity information consist with the AIA.;

Posted at 06:05PM Dec 05, 2013 in Congressional Testimony  | 

Message From Janet Gongola, Patent Reform Coordinator: Various Aspects Of Inventor's Oath/Declaration Provision Explained Including Updates To Certain USPTO Forms, Tips For Using An Application Data Sheet, And Reminders About Correcting Inventorship, etc

Various Aspects Of Inventor's Oath/Declaration Provision Explained Including Updates To Certain USPTO Forms, Tips For Using An Application Data Sheet, And Reminders About Correcting Inventorship, Juristic Entities, And Real Parties In Interest

In January 2013, we provided guidance regarding the use of a substitute statement, addressed the process for correcting inventorship and correcting/updating inventor names, and provided instructions for completing USPTO inventor’s oath or declaration forms. This current post provides information about new versions of some of the USPTO forms and tips for using an application data sheet.  Additionally, we provide an alert about the fee for corrections of inventorship that took effect in March 2013.  Finally, we provide a reminder about the need for juristic entities to be represented as well as the need to update the real party in interest at the time of issue fee payment. 

New Versions of Forms

The Office has updated the Application Data Sheet, Substitute Statement, and Power of Attorney by Applicant forms for use in patent applications filed on or after September 16, 2012.  Each of these three updates will be addressed in turn.  The updated forms are available at www.uspto.gov/forms.

First, the Application Data Sheet (ADS) form, PTO/AIA/14, has been updated to permit an assignee-applicant to be identified as an assignee on the patent application publication, in addition to being identified as the applicant. See the “Assignee Information including Non-Applicant Assignee Information” section of the PTO/AIA/14.  This change to the ADS form was made in response to public feedback.  Some customers want to be identified as both an applicant and an assignee, and this change to the form permits such dual identification.

Second, the Substitute Statement forms, PTO/AIA/02, PTO/AIA/04, and PTO/AIA/07, have been updated to provide for identification of the applicant (e.g., assignee) who is signing the statement on behalf of an inventor.  Additionally, the forms have been updated to contain “authorization to act” language for use by an individual who may not have a title that carries apparent authority but who is authorized to act on behalf of a juristic entity applicant.  A patent practitioner cannot sign a substitute statement on behalf of the applicant merely on the basis of having power of attorney in the application.  In order to sign as the applicant, a patent practitioner must have binding authority (e.g., given by corporate resolution from a Board of Directors).  See MPEP Section 324, V. for more information.

Third, the Power of Attorney by Applicant form, PTO/AIA/82, has been updated to provide a box where a juristic entity applicant may be identified and contains “authorization to act” language for use by an individual who may not have a title that carries apparent authority but who is authorized to act on behalf of a juristic entity applicant.  For patent applications filed on or after September 16, 2012, only the applicant may grant a power of attorney.  Thus, where the inventors are named as the applicant, an assignee would need to become the applicant by filing a request under 37 CFR 1.46(c) and include a corrected ADS per 37 CFR 1.76(c) and a statement under 37 CFR 3.73(c).

Tips for Using an Application Data Sheet

An ADS must identify with markings any changes in information from what was provided in a prior ADS or otherwise of record.  New information must be underlined, and deleted information must be shown using strikethrough or brackets.  The ADS can, however, be limited to showing only the section(s) of the ADS that contains the changed information.  The requirement for identification of the information being changed applies to all application data sheets, regardless of the filing date of the application or proceeding under both versions of 37 CFR 1.76.  Applicants do not have to use USPTO form PTO/AIA/14 to submit a corrected ADS and may instead create a corrected ADS in word processing software.  Please note that, for an application filed before September 16, 2012, applicants must still file a Supplemental ADS with markings and include all of the sections, rather than a corrected ADS, to change the information.  See MPEP 601.05 for more information.

New Additional Fee for Correction or Change of Inventorship

Where a request to correct or change the inventorship is filed under 37 CFR 1.48(a) after an Office action on the merits has been given or mailed, there is a fee that is due as of March 19, 2013, in addition to the processing fee, unless the request is accompanied by a statement that the request is due solely to the cancellation of claims in the application.  See 37 CFR 1.48(c).  The additional fee is set forth in 37 CFR 1.17(d).  As a reminder, the changes to the correction of inventorship rule, 37 CFR 1.48, were effective on September 16, 2012, and apply to any request to correct inventorship filed on or after September 16, 2012, regardless of the application filing date.  Where, however, a new inventor declaration is required due to an added inventor, the filing date of the application governs which version of 37 CFR 1.63 the declaration must comply with (e.g., for an application filed before September 16, 2012, the declaration would need to comply with pre-AIA 37 CFR 1.63, and USPTO Form PTO/SB/01 could be used).

Reminder for Juristic Entities

Juristic entities (this includes corporations and other non-human entities created by law and given certain legal rights) who seek to prosecute an application must do so via a registered patent practitioner, even if the juristic entity is the applicant.  See 37 CFR 1.31.  All papers submitted on behalf of a juristic entity must be signed by a patent practitioner unless otherwise specified, in accordance with 37 CFR 1.33(b)(3).  Only a limited number of documents may be signed by a juristic entity such as a terminal disclaimer, statement under 37 CFR 3.73(c), power of attorney, or substitute statement.  This change in practice was effective September 16, 2012, and applies to any paper filed on behalf of a juristic entity on or after September 16, 2012, regardless of the filing date of the application or proceeding.

Reminder to Update the Real Party in Interest at Time of Payment of the Issue Fee

For applicants other than the inventor(s), e.g., assignee-applicants, the Office is statutorily required to issue any patent to the real party in interest.  Accordingly, 37 CFR 1.46(e) requires that the Office be notified if there has been any change in real party in interest, e.g., the assignee-applicant is no longer the real party in interest.  The notification requirement applies no matter whether the non-inventor applicant was the applicant on initial filing or later became the applicant under 37 CFR 1.46(c).

Posted at 10:50AM Nov 05, 2013 in Miscellaneous  | 

Message From Janet Gongola, Patent Reform Coordinator: USPTO Releases Video Recording of Second Anniversary AIA Forum

The USPTO is pleased to release a video recording and slide presentations from the Second Anniversary AIA forum held on September 16, 2013. At the forum, USPTO subject matter experts from the Patent Business Unit and administrative patent judges from the Patent Trial and Appeal Board discussed prioritized examination (aka Track One), preissuance submissions, inventor's oath/declaration, supplemental examination, micro-entity discount, first-inventor-to-file, and the administrative trials.  Please check out the video and slides for tips for compliance and how to avoid pitfalls when making these various new AIA filings.

• Second Anniversary Forum Video
• Second Anniversary Forum Slides [PDF-4 mb]
• First-Inventor-to-File Workshop Materials [PDF]

Posted at 11:11AM Oct 17, 2013 in Implementation Activities/Roadshows  | 

Message From Janet Gongola, Patent Reform Coordinator: Options for Expedited Patent Application Examination, Including Prioritized Examination Under The AIA

The USPTO currently offers three alternative programs that provide applicants with the opportunity to expedite examination of their patent applications.  These three programs are: (i) Prioritized Examination (also known as “Track One”), which was introduced by the AIA; (ii) Accelerated Examination (AE); and (iii) the Patent Prosecution Highway (PPH).  By taking advantage of these expedited examination processes, applicants may capitalize on their exclusive patent rights sooner than through conventional examination, especially in areas where the technology is rapidly evolving.

More specifically, in the Prioritized Examination and the AE programs, applicants receive a first action on the merits in less than 5 months and a final decision from the examiner within 12 months from the grant of the request.  In the PPH program, applicants receive a first action on the merits within 2 to 3 months from the grant of the request.   The chart below illustrates the first action pendency data of the three programs as compared with conventional examination for fiscal year 2013.

To enter into one of the agency’s expedited examination programs, patent applicants must satisfy certain requirements largely focused on the size of the application as well as payment of an additional fee. 

In the case of Prioritized Examination, applicants can submit no more than 4 independent claims and no more than 30 total claims.  Applicants also must pay a $4000 fee, which is reduced to $2000 for small entities and to $1000 for micro entities.  Applicants further must electronically file their applications, and the applications must be complete on filing. 

In the case of AE, applicants can submit no more than 3 independent claims and no more than 20 total claims.  Applicants also must pay a $140 fee, which is reduced to $70 for small entities and to $35 for micro entities.  Applicants further must submit pre-examination search documents and an “examination support document.”  The requirement for pre-examination search documents and an “examination support document” is a key distinction between AE and Prioritized Examination.

In the case of PPH, there are no petition fees or limits on the number of claims, unlike for Prioritized Examination and AE.  However, a foreign patent office that participates in the PPH must have found at least one claim to be allowable for the application to receive expedited examination in the USPTO.   Currently, there are more than two dozen participating foreign patent offices.  

Here is a quick reference table summarizing the features and requirements of the three expedited examination programs available at the USPTO.  For more information about any individual programs, the Office has created specialized micro-site. 

Fast Examination Table: http://www.uspto.gov/aia_implementation/fast_exam_table20130912v1017.pdf

Prioritized Examination: http://www.uspto.gov/patents/init_events/Track_One.jsp.

ccelerated Examination: http://www.uspto.gov/patents/process/file/accelerated/index.jsp

Patent Prosecution Highway: http://www.uspto.gov/patents/init_events/pph/index.jsp.

Posted at 10:58AM Oct 17, 2013 in Miscellaneous  | 

Message from Janet Gongola, Patent Reform Coordinator: USPTO to Host Second Anniversary AIA Forum on September 16, 2013

The USPTO is pleased to announce that there will be an AIA forum on September 16, 2013 to commemorate the second anniversary of the new patent law.  The forum will be held on the USPTO's Alexandria campus in the Madison North Auditorium from 1 to 5 pm  The forum also will be webcast (access information below). 

USPTO subject matter experts from the Patent Business Unit and administrative patent judges from the Patent Trial and Appeal Board will discuss various provisions of the new patent law, focusing on filings made over the past several months with tips for compliance and how to avoid pitfalls.  In particular, the agency will address prioritized examination (aka Track One), preissuance submissions, inventor's oath/declaration, supplemental examination, micro-entity discount, first-inventor-to-file, and the administrative trials.  The agency likewise will field questions from the audience about each of these topics.

Please mark the date on your calendar, and join us for the most current recent updates on the new patent law. The forum is free with seating on a first-come, first-served basis.

Posted at 03:48PM Sep 03, 2013 in Miscellaneous  | 

Message from Janet Gongola, Patent Reform Coordinator: USPTO Examination of an Application Under Pre-AIA (First-To-Invent) Or AIA (First-Inventor-To-File) Law and Submission of Compliant 1.55/1.78 Statements for Transition Applications

Posted at 06:10PM Jun 28, 2013 in Implementation Activities/Roadshows  |