Posts Tagged: "inter partes review"

Pfizer, Inc. and BioNTech SE on Monday hit back at competitor COVID-19 vaccine maker Moderna with inter partes review (IPR) petitions against two Moderna patents on mRNA vaccine technology at the Patent Trial and Appeal Board (PTAB). Pfizer/ BioNTech told the PTAB that Moderna’s patents include “unimaginably broad claims directed to a basic idea” and asked the Board to cancel all of the challenged claims of both patents.  

On Thursday, Reuters reported that Google sent a letter to the U.S. Patent and Trademark Office (USPTO) criticizing proposed rule changes that the tech firm believes will stifle U.S. innovation. The internet giant expressly pointed to the field of artificial intelligence as a weak point for the USPTO and its patent examiners. The letter was signed by Halimah DeLaine Prado, General Counsel for Google.

In a precedential decision issued today, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and remanded a Patent Trial and Appeal Board (PTAB) ruling that found all claims of a Volvo Penta patent unpatentable as obvious. The court found that the PTAB erred in its analysis of nexus between the claims and evidence of secondary considerations, as well as in its weighing of the objective indicia of nonobviousness.

Last week, the U.S. Patent and Trademark Office (USPTO) hosted a webinar to discuss recent revisions to the interim process for Director review of America Invents Act (AIA) trial decisions by the Patent Trial and Appeal Board (PTAB). While the revised procedures include the delegation of the Director’s review authority to a pair of newly created panels, officials from the USPTO indicated that the Director’s discretion to review and opine upon issues in delegated cases meet the constitutional mandate laid out by the U.S. Supreme Court in U.S. v. Arthrex (2021).

A little over halfway through 2023, and nearing the end of the Patent Trial and Appeal Board’s (PTAB’s) fiscal year, we can take stock of an administrative body that is settling into a decade of precedent while big changes still loom. Unlike prior years, where policy changes resulted in statistical swings for institution rates, outcomes, amendment practice, and the like, this year has been more of an extension of previous trends (though institution rates are still creeping higher).

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a ruling in Shamoon v. Resideo Technologies, Inc. affirming a final written decision by the Patent Trial and Appeal Board (PTAB) that invalidated patent claims covering a communication system for accessing geographically remote locations. While the decision was nonprecedential, the Federal Circuit also struck down constitutional challenges to the PTAB proceedings raised by the pro se inventor and patent owner.

The U.S. Court of Appeals for the Federal Circuit (CAFC) held in a precedential decision today that an inter partes review (IPR) petitioner must be given the opportunity to present evidence of anticipation or obviousness under a new claim construction when that construction is first proposed by a patent owner in its response following the institution decision. The court ultimately vacated the decisions and remanded to the PTAB to reconsider.

The PREVAIL Act addresses current rules that enable gamesmanship at the Patent Trial and Appeal Board (PTAB) by huge corporations against small inventors, startups and other patent owners, and that increase invalidation rates. It introduces standing requirements, establishes a clear and convincing evidence standard to invalidate a patent, ensures a code of conduct is put in place for administrative patent judges (APJs), and more. While these changes are well-intended, due to the PTAB’s perverse incentive structure, the PREVAIL Act will only be marginally effective, and may have no real effect at all.

The Patent Trial and Appeal Board (PTAB) yesterday published the eighth installment of its Motion to Amend (MTA) Study, including updated information from March 15, 2019, through March 31, 2023. The study analyzes all motions to amend, including pre-pilot and pilot program motions. Of 469 total motions to amend patent claims since October 1, 2012, 83% (391) were denied; 10% (47) were granted; and 7% (31) were granted in part. According to a U.S. Patent and Trademark Office (USPTO) press release, this year’s report “provides the most comprehensive data regarding the pilot program to date, including additional information on MTA filings by technology.”

The Alliance of U.S. Startups and Inventors for Jobs (USIJ) published a White Paper this week applauding the introduction of the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act, which was introduced in June. As part of the paper, USIJ presented four case studies demonstrating how some high-profile Patent Trial and Appeal Board (PTAB) cases might have played out if the bill’s provisions had already been in force.

The Senate Subcommittee on Intellectual Property today held a hearing on Oversight of the United States Patent and Trademark Office (USPTO), with USPTO Director Kathi Vidal as the sole witness. Only a handful of senators questioned Vidal, and only one significantly challenged her in questioning. The hearing differed considerably from the House IP Subcommittee’s Oversight Hearing in April, where Vidal was repeatedly taken to task on the Office’s then-recently issued Advance Notice of Proposed Rulemaking (ANPRM).

Of the many ways that the Patent Trial and Appeal Board (PTAB) works to the detriment of the U.S. innovation economy, one of the most nefarious is the Chinese government’s use of patent validity review to advance its national interests. Recent briefing filed at the PTAB suggests that the Board is quietly helping China win the war for technological supremacy during the 21st century, mainly by destroying the economic interests of American small businesses innovating in industrial sectors critical to American national security.

The United States Patent and Trademark Office (USPTO) today announced that it is retiring the Precedential Opinion Panel (POP) and extending the Director Review process to decisions on institution in America Invents Act (AIA) proceedings. The POP was established in 2018 under Director Andrei Iancu. Earlier this year, Vidal said that guidance on replacing the POP was one of the issues she expected to announce in the first part of her second year in office.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision finding the Patent Trial and Appeal Board (PTAB) erred in too narrowly confining its motivation-to-combine inquiry and improperly limiting its definition of the relevant art to hold that Axonics, Inc. had failed to prove Medtronic, Inc.’s patent claims obvious. The patents at issue are Medtronic’s U.S. Patent Nos. 8,626,314 and 8,036,756. They cover “a neurostimulation lead and a method for implanting and anchoring the lead.”

In April, the United States Patent and Trademark Office (USPTO) requested public input on an Advance Notice of Proposed Rulemaking (ANPRM). The Request for Comments (RFC) allowed the public to voice their opinion on the proposed rules, including hundreds of real, authentic inventors. In the past, US Inventor has asked its members to use their voices and write comments for the USPTO’s requests. Typically, these requests generate at least 100 responses from USI’s members. This time, USI decided to level the playing field and give its members a chance to speak as loudly as its adversaries. We generated nearly 2,400 real comments from inventors, patent holders and concerned individuals.