The Patent Trial and Appeals Board has released another decision interpreting 35 U.S.C. 315(b), regarding the time bar for filing a petitions for inter partes review (IPR). Specifically, the PTAB has again been asked to interpret what the phrase “served with a complaint alleging infringement of the patent” means. This rather straightforward language has resulted in two recent opinions which help define what actions begin the clock on the 1-year deadline to file an IPR.

As we discussed in January, the time limit for filing an IPR applies to counterclaims alleging patent infringement, as well as complaints alleging infringement, as defined in the statute. In a more recent case, Amkor Technology, Inc. v. Tessera, Inc., IPR2013-00242, the PTAB determined that an allegation of infringement in a Federal arbitration proceeding does not trigger the one-year time bar under Section 315(b).


Continue Reading A Ticking Clock – The PTAB Continues to Define What Constitutes a Complaint Alleging Patent Infringement

On January 21, 2014, the Patent Trial and Appeal Board issued its second Final Written Decision in a Covered Business Method (CBM) Proceeding under the America Invents Act. CBM Proceedings allow for the review of a business method patent on any ground of patentability, and fill a gap between Inter-Partes Review (IPR) which only allows for review based obviousness or novelty, and Post-Grant Review (PGR), which is applicable only to patents issued based on applications filed on or after March 15, 2013, though it allows for review on any ground of patentability.

In this proceeding, CRS Advanced Technologies alleged that certain claims of U.S. Patent No. 6,675,151 were invalid as patent ineligible subject matter under 35 U.S.C. § 101. Broadly, the patent covers systems and methods for placing temporary workers in open positions. The PTAB granted review of all of the challenged claims and held a hearing in August, 2013. The Final Written Decision invalidated all six challenged claims as “directed to abstract, and, therefore, unpatentable, methods for substitute fulfillment.” This is the second time in as many decisions in which the PTAB invalidated business methods claims.

Broadly, the claims are directed toward a method of using a computer to find temporary workers. Claim three, specifically, provides:

Continue Reading PTAB Rejects Covered Business Method Claims

Since we last discussed joinder in inter partes review (IPR) proceedings, the Patent Trial and Appeals Board (PTAB) has released two interesting orders that expand the case law on the topic.

In Fifth Third Bank v. Stambler, IPR2014-00244, Fifth Third Bank filed a petition for inter partes review, along with a motion to join IPR2013-00341. The petition was filed on December 9, 2013, more than a year after Fifth Third Bank was served with a complaint alleging infringement of the patent. On December 12, 2013 the Board granted a joint request by the parties to IPR2013-00341 to terminate.


Continue Reading Lack of Speed Kills – The Dangers of Waiting in the PTAB

The new Inter Partes Review (“IPR”) and Post-Grant Review (“PGR”)  procedures are similar to district court litigation in many respects: there are opportunities for discovery, depositions, adverse motion practice, and a trial. As such, many participants in these proceedings may wish to retain experienced litigation counsel, who may not be registered to practice before the USPTO.

The regulation authorizing counsel to appear pro hac vice is 37 C.F.R. 42.10(c) and provides:

The Board may recognize counsel pro hac vice during a proceeding upon a showing of good cause, subject to the condition that lead counsel be a registered practitioner and to any other conditions as the Board may impose. For example, where the lead counsel is a registered practitioner, a motion to appear pro hac vice by counsel who is not a registered practitioner may be granted upon showing that counsel is an experienced litigating attorney and has an established familiarity with the subject matter at issue in the proceeding.

The Patent Trial and Appeal Board (“PTAB”) recently clarified the procedures for filing a motion for admission pro hac vice, in IPR2013-00639. First, the motion shall be filed no sooner than 21 days after service of the petition, when the patent owner must file their mandatory notices. Any opposition must be filed within seven days after the motion, and no reply is allowed unless authorized by the PTAB.
Continue Reading Stranger in a Strange Land – USPTO Clarifies Rules for Pro Hac Vice Admission

Under the America Invents Act (AIA), parties to an Inter Partes Review (IPR) or Post Grant Review (PGR) may move to join pending IPR or PGR proceedings. See 37 C.F.R. § 42.122 (for IPR), and 37 C.F.R. § 42.222 (for PGR).

The regulations provide, in part:

(b) Request for joinder. Joinder may be requested by a patent owner or petitioner. Any request for joinder must be filed, as a motion under §42.22, no later than one month after the institution date of any inter partes review for which joinder is requested. The time period set forth in §42.101(b) shall not apply when the petition is accompanied by a request for joinder.

In addition to the efficiencies that come with consolidation of proceedings, a petitioner may use the joinder rules to get around the filing deadline laid out in § 42.101(b). The regulations prevent that party from filing a new IPRs and PGRs more than a year after the date the petitioner was served with a complaint for patent infringement. However, if that petition is filed with a motion to join a pending review proceeding, the petitioner can avoid that deadline. In order to take advantage of this, there must already be a pending proceeding (i.e. an earlier petition must have been timely filed and a instituted).
Continue Reading The More the Merrier – Joinder under the AIA

In September of 2012, the old inter partes reexamination system gave way to the new inter partes review proceedings. The America Invents Act (AIA) gave the US Patent Office authority to set the fees for IPR proceedings at level reasonable related to the anticipated costs of these new, more robust, proceedings. Not surprisingly, the IPR fees were set substantially higher than those for the old inter partes reexamination system.

However, along with this change and accompanying fee differences, the Patent Office also raised the filing fees for ex parte reexaminations dramatically. (Ex parte reexamination, as the name suggests, provides a mechanism for challenging patents with very limited opportunities for the challenger to participate.  Originally, ex parte reexamination was the only option for third parties to request review of issued patents.  The AIA largely left this system untouched.)  As the Patent Office’s fiscal year comes to a close, we have an opportunity to examine how the first year of higher fees affected filings of ex parte reexaminations and inter partes reviews.
Continue Reading In For a Penny – Are Fee Increases Reducing the Number of Ex Parte Reexamination Filings?

The regulations implementing Inter Partes Review (“IPR”), as well as Post-Grant Review (“PGR”), allow the Patent Trial and Appeal Board (“Board”) to join or stay certain proceedings by motion or sua sponte. See 37 C.F.R. § 42.122 (IPR), and 37 C.F.R. § 42.222 (PGR). This provision seems to make a good deal of sense in terms of avoiding duplication of effort and possible inconsistent results.
Continue Reading Too Many Cooks in the Kitchen? – PTAB Puts Parallel Reviews By Central Reexam Unit on Hold

As discussed in Part 1, unlike in reexaminations, in an inter partes review, a protective order is available to parties seeking to keep their confidential information sealed from public view.

Despite the availability and relative ease of putting a protective order in place, relatively few parties have chosen to do so. In seventy-seven of the inter partes reviews instituted since the beginning of 2013 to date (based on petitions filed between September and December 2012) the parties have moved to seal documents in only six cases. Regardless, the parties to a proceeding should agree to a protective order early-on, so that an agreed-to protective order will be available if and when it is needed.


Continue Reading Protecting Confidential Information at the PTAB – Part 2

On June 27, 2013, Judge Zobel, in the District of Massachusetts, issued a post-trial order granting a permanent injunction, but stayed that injunction pending resolution of a co-pending reexamination before the Patent and Trademark Office. This case serves as an interesting study in balancing the factors for an injunction, and the effect a pending inter partes reexamination or inter partes review proceeding may have on that analysis.

The plaintiff, Smith and Nephew, Inc. (“S&N”) sued Interlace Medical, Inc. and Hologic, Inc. (collectively, “Hologic”) for infringement of two patents relating to arthroscopic surgical instruments and endoscopic cutting devices. After a ten-day trial, the jury found all the asserted claims valid and infringed.
Continue Reading Stay of a Permanent Injunction Pending

One of the many changes under the American Invents Act (AIA) is that documents submitted in proceedings before the Patent Trial and Appeal Board (PTAB) may be filed under seal (that is to say, excluded from public view). Protection for sensitive documents was unavailable for the pre-AIA inter partes reexamination proceedings, however, the AIA authorizes the Patent and Trademark Office (PTO) to keep confidential documents sealed during the new Inter Partes Review and Post-Grant Review proceedings. 35 U.S.C. §§ 316(a)(7), 326(a)(7).

Continue Reading Protecting Confidential Information at the PTAB – Part 1