USPTO Responds To Criticism By Promising PTAB Rule Changes That Should Benefit Patent Owners

By Tom Engellenner
Newly appointed USPTO Director Michelle Lee has responded to public criticism of the post-grant patent review mechanisms provided by the America Invents Act (AIA) by announcing in her blog last week that the government will implement several rule changes. The new rules, which will be implemented in three stages, have not yet been finalized but Director Lee strongly hinted these changes should benefit Patent Owners.

One of the rule changes apparently will make it easier for patent owners to amend their claims that are challenged by petitioners in inter partes review (IPR), covered business method (CBM) review and post grant review (PGR) proceedings.

According to the Director Lee, a first round of “quick fixes” will be released in the spring, followed by a second round of more substantial changes that will be published in the Federal Register for public comment in the summer. A third round of changes will follow involving revisions to the PTAB Trial Practice Guide, which governs the conduct of IPR, CBM and PGR proceedings. Continue reading “USPTO Responds To Criticism By Promising PTAB Rule Changes That Should Benefit Patent Owners”

PTAB Panels Are Divided Regarding Interpretation Of The Joinder Provision

By Reza Mollaaghababa
The America Invents Act (AIA) allows a petitioner to request joinder of an inter partes review (IPR) of a patent with an IPR proceeding previously instituted with respect to that patent so long as the request for joinder is filed “no later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. 42.122(b). The joinder provision (35 U.S.C. 315(b)) provides:

If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under Section 311 that the Director, after receiving a preliminary response under Section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.

In many cases, a petitioner requesting joinder is the same petitioner who had filed the previously-instituted proceeding. Such requests for joinder are typically made to circumvent the time bar imposed by 35 USC 315(b), which bars the institution of an IPR based on a petition that is “filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” This time bar does not, however, apply to a request for joinder. Continue reading “PTAB Panels Are Divided Regarding Interpretation Of The Joinder Provision”

Federal Circuit Panel Blesses BRI Standard for Claim Construction at PTAB But Another Panel May Not

By Tom Engellenner
The Cuozzo v. Garmin case, discussed in our blog in January, has been decided in favor of the U.S. Patent and Trademark Office (USPTO). A divided panel decided 2-1 to uphold the USPTO’s claim construction standard used by the Patent Trial and Appeal Board (PTAB) in the new inter partes review proceedings under the America Invents Act (AIA). See, In re: Cuozzo Speed Technologies LLC, CAFC Case Number 2014-1301, Opinion dated February 4, 2015.

The majority decision, written by Judge Timothy Dyk, concludes that Congress authorized the “broadest reasonable interpretation” (BRI) standard for inter partes review (IPR), post-grant review (PGR) and covered business method (CBM) proceedings, even if the statute did not define what claim construction standard should be used.

The majority opinion, in which Judge Raymond Clevenger joined Judge Dyks, found that the adoption of the BRI standard did not exceed the USPTO’s authority. “There is no indication that the AIA was designed to change the claim construction standard that the USPTO has applied for more than 100 years,” according Judges Dyks and Clevenger.

As the name suggests, the BRI rule gives the PTAB the ability to interpret each element of a claim as broadly as reasonably possible so long as the interpretation is not contradicted by the patent specification. The impact of such broad interpretations is that claim language can “read on” prior art that otherwise might not be relevant if the claim element is given its ordinary meaning. Continue reading “Federal Circuit Panel Blesses BRI Standard for Claim Construction at PTAB But Another Panel May Not”