As the legal blog-o-sphere has become larger and more significant, it has become increasingly common to see blog articles cited in proceedings before the US Patent and Trademark Office (USPTO), such as the inter partes review (IPR), post grant review (PGR) and covered business method review (CBM) proceedings established by the America Invents Act (AIA).
When faced with a CBM review, one patent owner challenged the Patent Trial and Appeal Board (PTAB)’s decision to institute the review based in substantial part on an article published by IPWatchdog.com, a popular online blog covering patent news (Google Inc. v. Zuili, Patrick, CBM2016-00008, Paper 23, p. 35).. The article claimed that the PTAB was biased in favor of the petitioner.
Similarly, another patent owner facing a CBM review presented a motion to amend, which incorporated support from an article hosted on Law360 (Epicor Software Co. v. Protegrity Co., CBM2015-00006, Paper 29, p.17)., The article argued that the notoriously high burden for amendments faced by patentees in post-grant proceedings was not as high as believed. Specifically, the Law360 article argued that there was no burden on the patent owner to show that the amended claims were patentable over “all prior art known to man,” quoting Chief Judge James Donald Smith’s statement at a meeting of the Patent Public Advisory Committee.
With the help of PostGrant Portal, an online platform that permits full-text searching across the USPTO’s documents and exhibits, legal scholars have found that legal blogs are frequently referenced in the motions and petitions of petitioners and patentees and in the expert declarations of expert witnesses, and are often used as secondary resources. See table 1.
Practitioners before the PTAB appear to rely most heavily on citations to blog posts because the simplicity and clarity of the blog posts make them easy to understand. Often, practitioners include these citations in secondary arguments, rather than in the main thrust of their petition or other filing.
Research on PostGrant Portal found that there was no disparity between petitioners and patent owners regarding their use of blog articles. That is, both petitioners’ and patent owners’ reliance on blog articles in the course of post grant proceedings has been approximately equal. However, the manner in which the blog articles were used did vary widely based on the litigator’s position during the proceeding. For petitioners, blog articles were most often cited to construe the claims (Apotex Inc. v. Amgen Inc., IPR2016-01542, Paper 2, p.69), were introduced as previous publications of an expert witness in order to help prove their qualifications (Samsung Electronics Co., v. Papst Licensing, IPR2016-01733, Ex. 1014, p. 99), or were used to bolster the credentials of one or more of the representing attorneys (Google, Inc. et al v. Smartflash, CBM2015-00132, Paper 17, p. 2). For patent owners, blog articles were most often referenced to provide support to summarize and clarify certain legal standards such as claim construction standards (Uniloc USA, Inc. et al v. Allscripts Healthcare Solutions, Inc., IPR2015-01615, Paper 12, p. 8), to clarify legislative history and identify Congressional intent (Coalition for Affordable Drugs VII v. Pozen, IPR2015-01241, Paper 13, p. 47), and to rebut the petitioner’s expert testimony by attacking the expert’s credibility (Coalition for Affordable Drugs VII v. Pharmacyclics, IPR2015-01076, Paper 20, p. 13).
Among the post-grant proceedings introduced by the America Invents Act, inter partes review, and petitions to institute the same, have to date proven to be the most popular, primarily because it presents a cost-effective alternative to litigating invalidity in federal district court. Covered business method review proceedings are in second place, partly because of the narrow focus of these proceedings on business method patents. Only a few post-grant review petitions have been filed so far, which is primarily thought to be because of the limited scope of PGR; specifically, PGR is only applicable to patents filed after March 16, 2013. Our research on the citations to blog articles reflects the same pattern. Most of the citations to blog articles were made as part of an IPR proceeding, while the sum total of PGR proceedings contains only one citation to a Law360 article.
This trend may be due to other factors other than the popularity of IPR proceedings. For example, another reason why petitioners may be more likely to cite blog articles in IPRs rather than in PGRs is the lower standard for instituting an IPR proceeding, which may lend itself to using simpler and clearer evidence in IPR petitions. In order to institute an IPR review, the PTAB need only find a reasonable likelihood of success for invalidating at least one claim. By contrast, CBM and PGR proceedings use a more stringent “more likely than not” standard. Because the “reasonable likelihood” standard is less stringent, it may be more acceptable to introduce persuasive extrinsic evidence found in a less-formal source such as a legal blog, while the same source may receive added scrutiny under the heightened “more likely than not” standard used in CBM and PGR proceedings.
A breakdown of the data by technology center further reveals that proceedings related to biotechnology and computer patents are more likely to include citations to blog articles than any other areas. See Figure 1. This result is not surprising, as these cases are likely to touch on matters related to 35 U.S.C. § 101, which has been extensively covered by the legal blogosphere. Cases related to other subject matter are likely to be more concerned with matters related to § 102 and § 103, which are likely to be more specific to the § 102 or § 103 references presented in the case, and which have been less extensively covered by the legal blogosphere.
New forms of media are increasingly finding their way into judicial opinions. For example, the oft-cited Judge Richard Posner, of the Court of Appeals for the Seventh Circuit, has described Wikipedia as a “terrific resource” which “[p]artly because it is so convenient… often has been updated recently and is very accurate.” However, he cautioned that “[i]t wouldn’t be right to use it in a critical issue. If the safety of a product is at issue, you wouldn’t look it up in Wikipedia.”
Has the online legal blogosphere earned the same praise? The answer appears to be yes. However, it is too early to reach the conclusion that blog articles, by themselves, can influence the opinions of PTAB judges, as some practitioners appear to be trying to achieve. Based on statistical data from PostGrant Portal, whether a petition contains blog articles or not does not seem to have any impact on the USPTO’s institution rate. In addition, the PTAB thus far has never cited any blog articles in the final decisions.
To us bloggers, the convenience and popularity of legal blogs have dramatically improved patent litigators’ understandings of many PTAB decisions. We are happy to see this current trend of citing blog articles, published by experienced patent practitioners, directly in the PTAB petitions.
Further, bloggers who operate other services are better equipped to tailor those services to our growing audiences. For example, although the USPTO recently has released a new system called Patent Trial and Appeal Board End to End (PTAB E2E), offering searching of PTAB trials, it functions primarily as a streamlined interface for docket management and fee payment. Private systems like PostGrant Portal have added additional features based on the requests of customers, such as full-text searching across all documents, or numerous analytical tools that can be used to analyze trends in post-grant proceedings, that have not been made available by the USPTO. This means that paying attention to the legal blogosphere can be of great interest, even to those practitioners who are on the cutting edge