A number of significant changes occurred in 2018 at the U.S. Patent and Trademark Office (USPTO). To begin with, in February 2018, a new USPTO Director took office.  Director Andrew Iancu, a former patent litigator with law firm experience, appears to have brought a different perspective than that of his corporate predecessors – Michel Lee (Google) and David Kappos (IBM) – to the job at the helm of the USPTO.  In his Senate confirmation hearings, Iancu made it clear that he felt that better balance was needed in the administrative review of issued patents by the USPTO under the America Invents Act (AIA).   He pledged to assess “improvements in the AIA trial standards and processes.”  Iancu identified “institution decisions, claim construction, the amendment process, and the conduct of hearings” as areas that warranted study.  In fact, Director Iancu did a lot more than study these aspects of practice before the Patent Trial and Appeal Board (PTAB) in 2018.
Continue Reading Year in Review: Changes in PTAB Practice in 2018

The Court of Appeals for the Federal Circuit decided an appeal earlier this month in a long-running battle between footwear manufacturers Nike and Adidas that gives Patent Owner Nike a partial (and perhaps fleeting) victory. The Federal Circuit affirmed the Patent Office decision in-part, vacated-in-part and remanded the case for further proceedings.

On November 28, 2012, Adidas AG petitioned the Patent Trial and Appeal Board (the “Board”) to institute an Inter Partes Review (“IPR”) to invalidate all of the claims of Nike’s 7,347,011 patent. (IPR2013-00067). After a trial was instituted, Nike did not file a Patent Owner Response but instead filed a Motion to Amend, requesting the Board cancel claims 1-46 and add new substitute claims 47-50. The Board granted the motion to cancel all of the original patent claims but denied the motion as to the proposed new claims 47-50, stating that Nike provided only a conclusory statement that the proposed claims were patentable which failed to persuade the Board to grant the motion. In the alternative, the Board also stated that Nike failed to prove patentability of the substitute claims over the prior art references identified by Petitioner Adidas. Nike appealed the decision. Nike, Inc. v. Adidas AG, No. 2014-1719, 2016 BL 38897 (Fed. Cir. Feb. 11, 2016).

Under § 316(e), the Petitioner carries the burden of proving that the patented claims under attack in an IPR proceeding are unpatentable. Nike argued that this burden also applies to new substitute claims submitted by the patent owner in a Motion to Amend. In other words, Nike argued that it does not carry the burden of proving that its new substitute claims were patentable. However, the Federal Circuit did not agree and concluded that section 316(e) does not keep the burden of proving unpatentability with the Petitioner for new substitute claims. Id. at 4. Accordingly, Nike carries the affirmative duty to justify why the newly drafted claims, which had never been evaluated by the USPTO, should be entered. Id. at 5.

However, the Federal Circuit concluded that at least one of reasons advanced by the Board for denying the Motion to Amend as to Nike’s substitute claims was improper. The court concluded that the statement used by Nike, that the proposed substitute claims were patentable over the prior art of record and over the prior art not of record but known to the patent owner, was adequate to address “known prior art” not of record in the proceeding absent an allegation of conduct violating the duty of candor. Id. at 21.
Continue Reading Battle Between Sneaker Makers Nike and Adidas Will Go Another Round

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