Posts Tagged: "BRI"

“It seems self-evident that the same patent contested in different tribunals should have its meaning – its boundaries – determined using the same standard,” Director Iancu said when discussing the final rules implementing the Phillips standard at the PTAB… Those few who were not pleased by the change have cited a believe that the change to the Phillips standard would usher in a return to lower quality patents. With a bit of a confrontational tone, Director Iancu took issue with that, finding the argument without merit.

In its decision, the Federal Circuit noted that the PTAB is entitled to strike arguments improperly raised in a reply brief under 37 CFR § 42.23(b). However, the appellate court disagreed that Ericsson raised a new theory in its reply brief and thus the Board erred in not considering those portions of the reply brief. “The Board’s error was parsing Ericsson’s arguments on reply with too fine of a filter,” the Federal Circuit found. Ericsson’s petition for IPR described how a person with ordinary skill in the art would be familiar with the concept of interleaving. The CAFC further found that the PTAB’s error was exacerbated by the fact that the new claim constructions proposed by Intellectual Ventures after institution gave rise to the significance of interleaving in the proceeding. In light of this, the Federal Circuit found that Ericsson deserved an opportunity to respond to the new construction.

The proposed rule would adopt the narrower standard articulated by the Federal Circuit in Phillips v. AWH Corp., where the “words of a claim are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” 415 F.3d 1303, 1312-13 (Fed. Cir. 2005). Additionally, under the proposed approach, the Patent Office would construe patent claims and proposed claims based on the record of AIA proceeding, and take into account the claim language, specification, and prosecution history. In response to the Patent Office’s notice of proposed rulemaking, the New York Intellectual Property Law Association (NYIPLA) recently submitted comments endorsing the Patent Office’s proposed changes.

Congresswoman Lofgren is now opposing a rule change she previously endorsed as an original co-sponsor of a bill that would have changed the claim construction rule in exactly the same way proposed by Director Iancu… But how is adopting a rule that would have already been the law had Lofgren had her way possibly frustrate or disregard Congress? Of course, we aren’t supposed to ask that question. Once the “patent troll” boogeyman card is played everything else is supposed to fade away.

Congresswoman Lofgren seems quick to forget that she was one of the original co-sponsors of the Innovation Act when it was introduced into the House back in February 2015. Had the Innovation Act passed, it would have required patents challenged in IPR proceedings to be construed in the exact same manner that a district court would have required in a civil action to invalidate the patent. So, it seems Lofgren was for the Phillips standard and eliminating BRI before she was against it.

found it disturbing that the Director Iancu would circumvent the prerogative of Congress with recently announced proposed PTAB claim construction changes, though she admitted the decision wasn’t unlawful. She expounded for several minutes on issues of res judicata, which could tie the hands of the PTAB in light of district court or U.S. International Trade Commission (ITC) decisions regarding patent validity. “[This] would completely blow up what we were trying to do as a Congress,” Lofgren said. “It looks to me that the people who disagreed with [the AIA] and lost in the Congress, they went to the Supreme Court, they lost in the Supreme Court, and now they’re going to you, and you are reversing what the Congress decided to do and what the Court said was permissible to do.”

Earlier today USPTO Director Andrei Iancu testified at an Oversight Hearing before the House Judiciary Committee. In addition to detailing forthcoming changes to post grant proceedings, Director Iancu fielded many questions on patent eligibility. “The issue is very significant. It is significant to the Office, to our applicants, and it is significant to the entire industry,” Iancu responded to Congressman Collins. “In some areas of technology, it is unclear what is patentable and what is not, and that can depress innovation in those particular areas. Our plan at the PTO is to work within Supreme Court jurisprudence to try and provide better guidelines. What we think is in and what we think is out, and provide, hopefully, forward looking guidance that helps examiners and the public understand what at least from the PTO’s point of view we think is right.”

Earlier today the USPTO announced proposed rulemaking that would change the prior policy of using the Broadest Reasonable Interpretation (BRI) standard for construing unexpired and proposed amended patent claims in PTAB proceedings under the America Invents Act and instead use the Phillips claim construction standard.. The new standard proposed by the USPTO is the same as the standard applied in Article III federal courts and International Trade Commission (ITC) proceedings, a change critics of the PTAB process have urged for many years in order to bring uniformity to post grant challenges across forums… The USPTO is also proposing to amend the rules for PTAB trials to add that the USPTO will consider any prior claim construction determination concerning a term of the claim in a civil action, or an ITC proceeding, that is timely made of record in an Inter Partes Review (IPR), Post Grant Review (PGR), or Covered Business Method (CBM) proceeding.

The Federal Circuit concluded that the Board’s construction of the term ‘body’ was unreasonably broad even given proper usage of the broadest reasonable interpretation claim standard… This ruling obviously makes perfect sense. Absent a comprehensive glossary that defines each and every term appearing in a patent application it would be impossible for any applicant to ever proscribe and/or preclude any and all possible broad readings for various terms that a patent examiner may come up with after the fact. Defining every term has never been required and anticipating frivolous examiner arguments has never been required, and is in fact considered inappropriate.

“In our time together today we are going to try and take stock of the health of the American patent system,” Michel began. “It is important to remember that the patent system was founded in the Constitution… and although the world ‘right’ appears many times in the Bill of Rights, in the original Constitution the only ‘right’ mentioned is the patent right.”… Investment is being disincentivized by uncertainty created by the aforementioned three waves of changes to the system. We should be looking at the impact on the flow of money, Michel explained.

In a December 22, 2016 decision, the Federal Circuit vacated a decision by the Patent Trial and Appeal Board (“The Board”) in two inter partes review (IPR) proceedings. The Court reversed the Board’s decision that the claims at issue were unpatentable for anticipation and obviousness… The broadest reasonable interpretation of a patent claim does not extend to a legally incorrect interpretation. When the claim as a whole expressly excludes a particular result, a claim term cannot be interpreted so broadly as to encompass that result.

The high water mark for the PTAB came in June 2016 when the United States Supreme Court issued its ruling in Cuozzo Speed Technologies v. Lee, which ruled that the broadest reasonable interpretations (BRI) standard was acceptable, and that IPR institution decisions were not appealable. After that, however, the tide turned decidedly with the Federal Circuit finding the PTAB acted arbitrarily and capriciously, and that they were blatantly using the wrong definition of a covered business method (CBM) patent to institute challenges on patents that were not financial business methods. The year ends with the Federal Circuit considering whether the PTAB’s refusal to allow motions to amend, despite the statute saying they are allowed, is within their discretion. The writing seems to be on the wall and 2016 seems to be ending with the PTAB in a very different place than it was at the start of the year.

It is one again time to take a moment to look back on the year that was, reflecting on the biggest, most impactful moments of 2016. For us that means looking backward at the most impactful events in the world of intellectual property. As you might expect, the two recurring themes in this 2016 patent year end review relate to patent eligibility and the Patent Trial and Appeal Board.

The Court held that the Board improperly continued to apply the BRI standard following the expiration. While the examiner properly applied the BRI prior to expiration, the BRI standard no longer applies the moment the patent expires – even if it means the Board applies a different standard than the examiner.