Yesterday I wrote about the petition for en banc rehearing that I recently filed in Plasmart v. Kappos. See Petition for Rehearing en banc filed in Plasmart v. Kappos. The case arose from what was originally an inter partes reexamination of U.S. Patent No. 6,722,674. The patent examiner ultimately concluded that claims 20-33 were patentable. The Board agreed that claims 20-33 were patentable as not being obvious, but also determined that claim 1 was patentable as well. Then at the Federal Circuit, in a nonprecedential decision, the panel determined that none of the claims were patentable.
I question whether it is appropriate to have a nonpredential opinion after the USPTO has gone through the time and expense of an inter partes reexamination. Based on the decision I specifically raised as an issue whether the original panel provided proper deference to the Board’s finding of facts, or instead merely substituted their own view. A view that I don’t believe was properly explained with the required specificity under KSR.
I have been doing a lot of research and writing on obviousness and KSR v. Teleflex lately, but not for publication on the blog so far. Last Friday, July 6, 2012, I filed a petition for rehearing en banc in Plasmart v. Kappos. I represent the Appellee-Patentee. The case arose out of what was originally an inter partes reexamination of U.S. Patent No. 6,722,674. The patent examiner found some of the claims allowable, the Board found all of the claims allowable, and then in a nonprecedential opinion the Federal Circuit overturned the Board.
This case intrigued me from the start because it seemed rather odd that there should be a nonprecedential opinion in an appeal to the Federal Circuit necessitated by a completely adjudicated inter partes reexamination at the United States Patent and Trademark Office. Moreover, the original panel concluded that the combination of known elements resulted in a predictable result. The problem with that reasoning, however, is that not all of the elements were found within the prior art. In fact, the Board found that there are no fewer than three (3) meaningful structural differences between the invention as claimed and the prior art.
Many law firms are starting to contemplate the new business opportunity that will arise on September 16, 2012, when the new post grant review procedures are ushered into effect thanks to the America Invents Act. The next wave of changes in patent law go into effect on September 16, 2012, which is one year to the day that President Obama signed the bill.
Section 7 of the Leahy-Smith America Invents Act changes the name of the current “Board” from the Board of Patent Appeals and Interferences to the Patent Trial and Appeal Board. The AIA also dictates that the Patent Trial and Appeal Board members will include the Director, Deputy Director, Commissioner for Patents, Commissioner for Trademarks, and Administrative Patent Judges. The duties of the Patent Trial and Appeal Board are to: (1) Review adverse decisions of examiners upon an application for patent; (2) review appeals of reexaminations pursuant to section 134(b); (3) conduct derivation proceedings pursuant to 35 U.S.C. 135; and (4) conduct inter partes reviews and post-grant reviews pursuant to chapters 31 and 32 of title 35, United States Code. The AIA further requires that each appeal, derivation proceeding, post-grant review including covered business method patent review, and inter partes review shall be heard by at least 3 members of the Board, who shall be designated by the Director.
The biggest myth about patent appeals is that that the examiner usually wins. The Patent Trial and Appeal Board (“Board”) posts that it reverses examiners only one out of every three decisions —33%. That number is accurate, and reflects the percentage of reversals among Board decisions. But another number is more helpful — 75%. That is the rough percentage of reversals among all appeals—not just Board decisions. The difference arises because not all appeals result in a Board decision. In fact, the vast majority of appeals (80%) never reach the Board. The Board’s 33% number has nothing to say about this invisible sea of patent appeals.
Teresa Rae, Deputy Director of the USPTO, herself a statutory member of the Board, speaks at the March 1 ceremony.
Earlier this month, on Thursday, March 1, 2012, the United States Patent and Trademark Office held a ceremony, welcoming 9 new Administrative Patent Judges to the Patent Trial and Appeal Board. The oath of office being administered by Chief Judge Paul Michel (ret.) of the United States Court of Appeals for the Federal Circuit. For more on the ceremony see Patent Judges Sworn in at the USPTO.
You may have heard — the USPTO is hiring. Not only is the USPTO actively hiring and searching for Administrative Patent Judges, but they are finding some extremely well qualified candidates to add to the ranks of those already serving. With the permission of each of the new APJs, and the cooperation of James Smith, Chief Administrative Patent Judge, it is with pleasure that I share the bios of the newest APJs, each individually pictured with Rebecca Blank, Deputy Secretary of Commerce.
As most of you are undoubtedly aware, the United States Patent and Trademark Office has been cranking out proposed rule packages one right after another. The speed at which these rules packages are coming out is impressive, but also makes it virtually impossible to keep pace while you continue to try and represent clients. The USPTO is obviously putting in a lot of time and effort, and by and large it seems that they are doing a good job. But as you start to review proposed rules package after proposed rules package you start to get the sense that the America Invents Act (AIA) is going to change even more than anyone expected.
One of the rules packages that is sure to capture the attention of patent attorneys and litigators alike is the recently released Rules of Practice for Trials Before the Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions (hereinafter “Board rules”). What a mouthful! This particular rules package is some 35 pages in the Federal Register 3 column format. If you copy and past into Word with Arial 12 point font this rules package is 86 pages, just to give you some idea of the magnitude.
President Obama delivers his State of the Union address, January 24, 2012.
In the annual State of the Union Address President Obama explained: “Innovation is what America has always been about.” Today the Obama Administration took major steps forward to collaboratively work with private industry to tap American ingenuity to assist in a world-wide humanitarian effort. The United States government will work with the private sector, universities, and non-profits to foster game-changing innovations with the potential to solve long-standing development challenges in health, food security and environmental sustainability.
I had the honor of being invited to the White House today for the Innovation for Global Development Event, which was held in support of the President’s commitment to using harness the power of innovation to solve long-standing global development challenges. As a part of this event, David Kappos, Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office, launched a pilot program dubbed Patents for Humanity, which is a voluntary prize competition for patent owners and licensees. The pilot program seeks to encourage businesses of all kinds to apply their patented technology to addressing the world’s humanitarian challenges.
USPTO Deputy Director Theresa Rea in her office on January 17, 2012.
I have known for a while now that I would be doing an in-depth look at the Senior Management Team at the United States Patent and Trademark Office. The series is currently in progress, and this is the second installment – my interview with Theresa Rea. Rea is a long time patent attorney and former President of the AIPLA. Currently, however, she is the person in the federal government with the longest title — Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office. Her title is longer than her boss’ title thanks to the inclusion of the word “deputy” twice.
When I interviewed USPTO Director David Kapposin December 2011, after the interview was concluded I asked him to give me some thoughts on his Senior Management Team. “When I say ‘Theresa Rea’ what are the first things that come to mind,” I asked. Kappos responded: “Tremendous background knowledge, energy, fun person to work with and to team with, deep knowledge of the life sciences sector…” Director Kappos would go on to say that with Rea at the agency “we’ve got all the bases covered. I’m the corporate guy, she’s the litigator. I’m the IT guy, she’s the Pharma person.” Indeed, Deputy Director Rae is the real deal and a nearly ideal compliment to Director Kappos.
Last week I wrote an article titled Business Methods by the Numbers, which took a look at the allowance rates for a variety of Art Units assigned to examine patents in class 705, the primary class where business methods and financial data processing inventions are classified in the United States. The article has raised a few eyebrows and has caused some to question whether there is disparate treatment among Art Units at the United States Patent and Trademark Office.
The fact that there is disparate treatment between and among various Art Units and patent examiners shouldn’t catch anyone by surprise. Everyone in the industry knows that some patent examiners feel they work for the Patent Granting Authority while others work for the Patent Rejection Office. Notwithstanding, there are some who are excusing what can only be characterized as truly alarming statistics as having something to do with the various types of patent applications assigned to each Art Unit. Allow me to call that out for what it is – hogwash! Class 705, including the applications handled by Art Unit 3689, is dominated by a who’s who of the largest technology and financial companies in the world. These companies hire some of the best attorneys in the world, they well understand how to write a patent application to articulate allowable subject matter and yet these large, well-funded companies represented by some of the best and brightest legal minds are incapable of obtaining a patent? If you believe that I have a bridge I want to sell you!
The United States Patent and Trademark Office earlier today welcomed 10 new Administrative Patent Judges of the Board of Patent Appeals and Interferences.
At 10:00am this morning in the North Auditorium of the Madison Building on the campus of the USPTO, Federal Circuit Chief Judge Randall Rader administered the oath of office to Jacqueline Wright Bonilla, Erica Franklin, James Housel, Deborah Katz, Neal Abrams, George Best, Andrew Caldwell, Thomas Giannetti, Andrew Metz and Grace Obermann.
The ceremony lasted approximately 45 minutes. It was well done, together with several musical numbers. After USPTO Director David Kappos’ brief opening remarks, Laverne Smith, a Board Supervisory Paralegal, sang “My Country, ‘Tis of Thee.” The program was then concluded with “God Bless America,” which was sung by April Mosby, a Board Patent Attorney.
At this time of the year many attorneys and agents are not paying all that much attention to the rules and requests for comments coming out of the Patent Office. Truthfully, with the number of changes that have taken place under the Kappos run Patent Office and the enormity of the America Invents Act many patent attorneys, including myself, are worn out! Add to that the typical end of the year matters for clients and our own businesses and it is easy to miss announcements in November and December.
With that in mind I thought I would take this opportunity to try and bring everyone up to speed on the various patent related announcements and notices in the Federal Register that were published in November 2011 and December 2011. I am told that more are on the way in January 2012. I can’t wait!
The United States Patent and Trademark Office was busy last week with Federal Register Notices while most of the business world seemed to be slowing down for the Thanksgiving holiday in the United States. Look for more on the various USPTO Federal Register Notices for November 2011 in the coming days, but let’s focus our attention on what most will likely consider the “big-ticket” item to emanate from the USPTO last week — changes to the Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals, which were announced in the Federal Register on Tuesday, November 22, 2011.
First and foremost, it is worth saying that the PTO has finally withdrawn the previously published final rule set relative to ex parte appeals before the Board, which never went into effect. This withdrawal of the failed 2008 changes to PTO appeals is effective November 22, 2011. For more on these previously published rules and the procedural background leading up to these amendments to USPTO appellate practice see PTO Proposes Rescission of Stayed Ex Parte Appeals Rules. The remainder of these new rules will go into effect on January 23, 2012.