USPTO Extends AFCP 2.0 Until September 30, 2019

Maier & Maier

The U.S. Patent Office announced that the After-Final Consideration Pilot 2.0 (AFCP 2.0) will be extended another year. Originally implemented in May 2013, the program allows for amendments and responses for the examiner’s consideration to be submitted after a Final Office Action has been sent. Prior to the implementation, applicants were limited to filing appeals or Requests for Continued Examination, both likely to be more costly options.

Of the thousands of AFCP requests submitted, approximately 25% have resulted in allowance, which, when combined with the usually lower cost of filing compared to alternatives, represents an intriguing option for those facing Final Rejections.[1] More information on the program is available at the PTO website here.

[1] https://blog.juristat.com/2017/7/12/do-afcp-20-requests-actually-work

USPTO ADOPTS PHILLIPS CLAIM CONSTRUCTION

Maier & Maier

Starting November 13, 2018, all IPR, PGR, and CBM proceedings will conduct their claim construction using the Phillips standard put forth by the Federal Circuit in 2005, turning away from the Broadest Reasonable Interpretation (BRI) standard it currently uses. This brings the PTAB in line with the Federal Courts and the ITC in examination standards.

Under BRI, claims are interpreted using the “broadest reasonable meaning of [a claim’s] words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.”[1] Under the Phillips standard, claims are given a narrower construction as “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.”[2]

Currently, there are about 150 petitions filed at the PTAB each month, with an institution rate of 40% over the last twelve months (statistics obtained using Insights at PostGrant Portal). It bears watching whether there will be a spike in filings at the PTAB this final month for petitioners who would prefer the BRI standard or a drop-off for those waiting for the new Phillips standard next month.

As Maier & Maier partner, Steve Kunin, explains here, the most significant impacts will not be felt in PTAB proceedings, but in District Court. “Practically speaking in most cases BRI and Phillips claim construction in PTAB AIA proceedings are not materially different; I see the real impact will be in district court proceedings when the patent owner is arguing for a narrow claim construction and can now point to the AIA trials as supporting the position.” Some petitioners may strategically wait for the new standard, as the PTAB construction would be given more deference with the newly aligned standards, and a narrower construction would prove useful in supporting a non-infringement argument.

[1] In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

[2] Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).

Maier & Maier Partner Stephen G. Kunin Named ‘Best Lawyer’ for 2019

Maier & Maier

Best Lawyer Magazine has named it’s 2019 Best Lawyers in Washington, D.C., including Maier & Maier’s Stephen G. Kunin among its Intellectual Property Law recognitions.

Mr. Kunin’s illustrious career includes more than three decades at the United States Patent Office, spending one of those decades as the Deputy Commissioner for Patent Examination Policy, and 13 years of private practice counseling clients and testifying as an expert in patent litigation cases. His work has earned him many notable awards including the Meritorious Executive Presidential Rank Award, The Vice President’s Reinventing Government Hammer Award, multiple Gold, Silver and Bronze Medals from the Department of Commerce, and a Career Achievement Award from the USPTO.

Mr. Kunin’s work has continued at Maier and Maier, where he provides opinions and expert testimony on all areas of patent law. His areas of expertise include post-issuance proceedings at the United States Patent Office, complex patent prosecution matters, patent litigation strategy, and United States Patent Office patent policy, practice and procedure.

This recognition from Best Lawyers for his continued work in IP comes after he was named one of Intellectual Property Today’s most influential people in IP law an “IP Star” by Managing Intellectual Property last May. The 2019 Best Lawyer recognition can be found here, while more information about Mr. Kunin and his practice at Maier & Maier is available here.

USPTO Addresses Expanded PTAB Panels With New Standard Operating Procedures

Maier & Maier

The USPTO’s Patent Trial and Appeal Board (“PTAB”) has issued two revisions to the Standard Operating Procedures with the stated goal of “increasing transparency, predictability, and reliability across the USPTO”.

The first, SOP 1, aims to provide clarity and certainty to the PTAB practice of expanded panels, which has come under criticism in recent years as “panel stacking”. The concern is over the possibility of the PTAB making strategic additions to Board Panels and targeting rehearing proceedings to sway the composition towards a desired outcome, which was even discussed amidst the recent Oil States proceedings in the Supreme Court.

In response to these concerns, the new procedures provide two key provisions: 1. a notice requirement and 2. a specific procedure for expanded panels.

Under the previous practice, the parties might not find out that there was an expanded panel until the decision was issued as there was no requirement to notify the parties. Not so anymore as SOP1 provides that the parties will be notified that the panel will be expanded and identify the Administrative Patent Judges who will be included on the expanded panel.

The updated procedures identify five parties who may suggest an expanded panel: Board members, patent applicants, petitioners, patent owners, and the Patent Business Unit. The Board members in the case submit their requests (or the requests they receive from one of the other eligible parties) along with reasoning (in the form of a  brief for an applicant’s, petitioner’s, or patent owner’s request) in the form of an email to PTABExpandedPanelRequest@uspto.gov. This account will be monitored and requests will be periodically brought to the Chief Judge for recommendation, and the Director for final approval.

It remains to be seen if these new procedures will do enough to curtail the concerns about the practice.

The second update, SOP2, creates a Precedential Opinion Panel (POP) at the PTAB which will “decide issues of exceptional importance” with “binding agency authority”. The POP will be composed of “Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges.” The POP will review nominated routine decisions made by panels to designate them as precedential or informative as outlined in detail in the updated SOP. Anyone may nominate a decision to be precedential, and all nominations will be reviewed by a Screening committee before being presented to the POP.

The entirety of the PTAB’s Standard Operating Procedure and any updates thereto are available here.

Maier & Maier Mounts Yet Another Successful Defense at the PTAB

Maier & Maier

In their latest triumph at the PTAB, Maier & Maier PLLC has won a major victory for GREE, Inc. by securing a non-institution decision, overcoming 3 challenges to their social gaming patent asserted by Supercell Oy in PGR2018-0037.

The challenged patent (9,662,573) covers a method for controlling a server device, a server device, a computer-readable recording medium and a game system. Supercell challenged the patent on three grounds: §101, §112(a), and §112(b).

The PTAB denied institution of the challenge as to all of the claims.  The PTAB explained their decision on the §101 challenge, stating “we are unpersuaded by Petitioner’s argument that providing these sequential incentives, as claimed, was conventional and known in the prior art.”  The analysis goes on to emphasize that Supercell failed to provide evidence, such as expert testimony or contemporaneous prior art, and also failed to provide relevant case law or persuasive argument to support its contention. Meanwhile for the §112 challenges, Maier & Maier successfully demonstrated that the patent was “cast in clear—as opposed to ambiguous, vague, indefinite—terms” and that Supercell “offered no credible evidence to support its assertion”.

Since Maier & Maier showed that none of the asserted grounds for unpatentability demonstrated a reasonable likelihood of success, as discussed above, the PTAB issued a decision denying institution, dealing Supercell a serious blow in their ongoing patent litigation.

Oracle Corp. v. Click-to-Call Technologies LP

Maier & Maier

Under 315(b) of the AIA (America Invents Act), Inter Partes Review “may not be instituted if the petition requesting the proceeding 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.”[1] The Click-to-Call decision revolves around whether the time-bar applies when a complaint has been voluntarily dismissed without prejudice.

In 2001, the patent in this case, U.S. Pat # 5,818,836, had been exclusively licensed to Inforocket, who filed a patent infringement suit asserting the ‘836 patent against Ingenio (then under its previous name, Keen).[2] Ingenio then purchased Inforocket as a wholly-owned subsidiary, and the parties stipulated to dismiss the suit without prejudice.[3] Subsequently the ‘836 patent was acquired by Click-to-Call.  On May 29, 2012, Click-to-Call filed suit asserting the same ‘836 patent against a number of defendents, including Ingenio, leading to the filing of this IPR. [4]

In an opinion designated as precedential by the PTAB, the Board ruled that a voluntary dismissal of a suit creates an exception to the 315(b) time-bar. “The Federal Circuit consistently has interpreted the effect of such dismissals as leaving the parties as though the action had never been brought.”[5] Based on the premise that a voluntary dismissal serves to nullify the existence of a suit, the PTAB held that the one-year time limit for filing an IPR would be nullified along with it.

On appeal, the Federal Circuit disagreed and found that the PTAB committed legal error in its determination.  The Federal Circuit overturned the PTAB ruling. As the decision explains “the provision unambiguously precludes the Director from instituting an IPR if the petition seeking institution is filed more than one year after the petitioner, real party in interest, or privy of the petitioner ‘is served with a complaint’ alleging patent infringement. Simply put, § 315(b)’s time bar is implicated once a party receives notice through official delivery of a complaint in a civil action, irrespective of subsequent events.”[6]

Unlike the 2001 infringement complaint, the PTAB’s precedential time-bar decision has now been entirely nullified.

[1] 35 U.S.C. § 315(b)

[2] Oracle Corp. v. Click-to-Call Technologies LP, IPR2013-00312, Paper 26 at 14 (PTAB Oct. 13, 2013).

[3] Id.

[4] Id.

[5] Id at 17.

[6] Oracle Corp. v. Click-to-Call Technologies LP, Slip Op at 13 (CAFC Aug. 16, 2018).

USPTO Proposes Patent Fee Changes

Maier & Maier

The USPTO has published a Notice in the Federal Register of proposed patent fee changes for public comments.

The fee adjustments resulting from this effort will not be implemented until the January 2021 timeframe.  The proposed average five percent increase to fees is similar to fees rising by 1.6 percent annually over a three year period.

This proposal includes introduction of new fees, targeted adjustments to existing fees, and discontinuation of some fees.

New Fees

  1. One proposed new fee is a surcharge for filing in a non-DOCX format.  This will be a $400 fee, and will encourage applicants to use the DOCX format, and is intended to improve Office efficiency and future search capabilities.
  2. Another proposed new fee is an annual active patent practitioner fee of $340 (if filed electronically). Further, a discount will be offered to those who certify completion of continued legal education (CLE), reducing the fee to $240.
  3. A fee for non-registered practitioners to appear before the PTAB is proposed.

Adjustments to Existing Fees

  1. A significant increase (525%) to the surcharge for late payment of maintenance fees.  The fee is currently $160, but will be increased to $1000 for large entities.
  2. An increase from $900 to $2000 the fee to request expedited examination of a design application, to help the Office manage staffing for these services.
  3. Issue and maintenance fees will be restructured.  The current large entity maintenance fees are $1600 (3.5 years), $3600 (7.5 years), and $7400 (11.5 years), and the proposal increases them to $2000 (3.5 years), $3760 (7.5 years), and $7700 (11.5 years).
  4. Fees for America Invents Act (AIA) trials are proposed to increase by roughly 25% due to a variety of factors, including the Supreme Court decision in SAS Institute Inc. v. Iancu.

Discontinuation of Fees

Fees related to obtaining copies of Patent Grant and Patent Application Publication TIFF Images or Full-Text W/Embedded Images will be eliminated and the Office will instead provide these services, in a slightly modified form (i.e. electronic), for free.

Below is a summary table of the common fees for a large entity to illustrate some of the proposed changes.

As seen below, total filing costs for a patent application (large entity) will increase $1720 increase to $1820.

Stephen G. Kunin Selected For 2019 Best Lawyers Award!

Maier & Maier

Maier & Maier is pleased to announce that one of our partners, Stephen G. Kunin has been selected by his peers for inclusion in the 2019 25th Edition of The Best Lawyers in America. This recognition in the field of Patent Law has been released publicly and is now available on www.bestlawyers.com. We congratulate him on achieving this honor.

 

Tribal Sovereign Immunity Does Not Apply in IPR Proceedings

Maier & Maier

In Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., Nos. 18-1638 to 18-1643, the Federal Circuit, in a precedential decision, affirmed the PTABs denial of St. Regis’s motion to terminate IPRs filed by Mylan based on tribal sovereign immunity. Tribal immunity does not apply in IPR proceedings because the USPTO is pursuing an adjudicatory agency action.

The Court concluded that “IPR is more like an agency enforcement action than a civil suit brought by a private party…. IPR is more like cases in which an agency chooses whether to institute a proceeding on information supplied by a private party.” Judge Moore writing for the panel majority averred that “[t]he Director’s important role as a gatekeeper and the Board’s authority to proceed in the absence of the parties convinces us that the USPTO is acting as the United States in its role as a superior sovereign to reconsider a prior administrative grant and protect the public interest in keeping patent monopolies ‘within their legitimate scope.'” (quoting Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144 (2016)).

In his concurrence, Judge Dyk wrote to describe in greater detail the history of inter partes review proceedings, history that confirms that those proceedings are not adjudications between private parties. While private parties play a role, inter partes reviews are fundamentally an agency reconsideration of the original patent grant, similar to ex parte reexamination and inter partes reexamination proceedings, which are not adjudications of private disputes and to which sovereign immunity does not apply.

The Court’s opinion was limited to whether tribal immunity applies in IPRs: “we leave for another day the question of whether there is any reason to treat state sovereign immunity differently.”

PTAB Designates 5 Decisions as Informative

Maier & Maier

The PTAB has designated five new decisions as informative, three on IPR practice procedure and two ex parte decisions (one on issue preclusion and one on claim construction):

Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper 55 (PTAB Aug. 7, 2013)

Here the Board provides guidance on foreign depositions, both on the location where they are taken and the language in which they are conducted. The Board emphasizes that “the parties are in the best position to determine the procedure by which the deposition is to be conducted” but provides 12 general guidelines for procedures to use for depositions in foreign languages covering such topics as 1). each sides’ right to bring an interpreter, 2). protocol for resolving disagreements between interpreters on their respective interpretations, and 3). notice requirements on documents which will be “sight read” at the deposition. The full list is available in the decision linked above.

Ex parte Jung, 2016-008290 (PTAB Mar. 22, 2017)

In this appeal, the appellant challenged the examiner’s interpretation that the claim language “at least one of a connection branch and a contents connection list” required only ‘a connection branch’ OR ‘a contents connection list’ as opposed to requiring both of their presence. In their reversal, the Board applied the ruling from the Federal Circuit in SuperGuide Corp. v. DirecTV Enterprises, Inc., which explained that the plain meaning of ‘at least one of A and B’ is the conjunctive phrase ‘at least one of A and at least one of B.”[1] The Board explained that the plain meaning could have been rebutted with a demonstration that the other claims, specification, or the prosecution history necessitated a broader interpretation, but, absent such a showing, the examiner erred.

Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 (PTAB Jan. 19, 2018)

In this decision, the Board offers an analysis on the ‘good cause’ standard for protective orders.  The Board denied a motion for a protective order without prejudice for failure to demonstrate that “(1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4), on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record.”[2]

Colas Sols. Inc. v. Blacklidge Emulsions, Inc., IPR2018-00242, Paper 9 (PTAB Feb. 27, 2018)

The decision here applies to § 315 bars to institution in IPRs. Specifically, the Board found institution was barred when a petitioner has previously filed for a declaratory judgment of invalidity on the same patent.  Furthermore, the Board ruled that a motion for joinder could not save a petitioner from the statutory bar under § 315(a)(1). In its reasoning, the Board explains that while a § 315(b) time bar is specifically excluded in instances of joinder under § 315 (c), the statutory bar for § 315(a)(1) provides for no such exemption.

Ex parte Ditzik, 2018-000087 (PTAB Mar. 2, 2018)

Here, the Board upheld an examiner’s use of issue preclusion from a related invalidity finding against the applicant in District Court. In so doing, the Board found the following arguments by the appealing applicant accurate, but unpersuasive with respect to issue preclusion: 1). The fact that the claims are not the same in the proceedings; 2). The procedural possibility for the District Court ruling to be overturned; and 3). The PTO’s absence as a party from the District Court proceeding. While the Board did not find any of the following in this case, it allowed for potential rebuttals to issue preclusion when 1). The standard applied in the prior final decision might have caused a different outcome than before the Board; 2). Evidence available now was demonstrated to not be available at the time of the prior proceeding; or 3). There was otherwise not a ‘full and fair opportunity to litigate’ in the prior proceeding and the Board wishes to exercise its discretion despite the motivations of efficiency and consistency for issue preclusion.

Each decision is linked in the respective heading above for more information and reference, and a full list of all precedential and informative decisions is available here.

[1] 358 F.3d 870, 885-86 (Fed. Cir. 2004).

[2] 37 C.F.R. § 42.54(a).