Thursday, 10 April 2014

10 Points on New US Post-Grant Proceedings

This is based on an article by Anthony Tridico and Timothy McAnulty in the March 2014 edition of the CIPA Journal.

1.  Since September 2012 over 1,000 petitions have filed at the USPTO’s Patent Trial and Appeals Board (PTAB) requesting the Board review issued claims. About 70% of petitions involve electrical/computer patents.

2.  The Board has been proceeding with review in over 80% of petitions.

3.  A petitioner must file a petition for inter partes review within one year of being served with a complaint for infringement.  The Board has issued 2 significant decisions dealing with this matter, Macauto v BOS GmbH & KG and Motorola Mobility LLC v Arnhouse.  In these decisions patent owners failed to fulfil all the requirements of service and therefore the one year bar was not triggered.

4.  The conditions for making amendments to claims are strict.  The amendments must be in response to a ground of unpatentability in the trial and must also be traceable back to the original claim.  To date the Board has not granted any motion that amended a claim or proposed new claims, apart from cancelling a claim.

5.  In Idle Free Systems v Bergstrom the Board explained that the patent owner needed to specifically identify the new features in an amendment and show patentable distinction, with the burden on the patent owner to show patentability.  The decision also confirmed amended claims cannot broaden scope.

6.  In Blackberry v MobileMedia Ideas the patent owner was refused the motion to amend because a construction was not provided for each new feature, an explanation was not given for how removal of certain features was responsive to a ground of unpatentability and because of the deletion of features from claims the new claims were not traceable to original claims.

7.  So far the Board has only confirmed 11 claims to be patentable (in just 2 inter partes reviews) out of the hundreds that have been challenged.

8.  Claim construction seems to be an important part of determining success.  50% of the time the Board adopts its own construction, 25% of the time it adopts a petitioner’s and 20% of the time it adopts the patent owner’s. 5% of the time it adopts construction from a district court.

9.  The Board is predominantly looking at the specification to reach a decision on claim construction, with less weight on expert declarations and prior prosecution.

10.  The Board is routinely deeming some of the proposed grounds from petitioners as redundant and so it would be wise for petitioner to stick to their strongest arguments.  However the Board has allowed multiple trials to be instituted against the same patent between the same parties where the petitioner has filed multiple petitions to avoid grounds being found to be redundant.

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