Posts Tagged: "Patent Trial and Appeal Board"

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).

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 While the decision was nonprecedential, the Federal Circuit also struck down constitutional challenges to the PTAB proceedings raised by the pro se inventor and patent owner.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.

Scott McKeown is one of the preeminent Patent Trial and Appeal Board (PTAB) practitioners in the country, founder and author of PatentsPostGrant.com, Co-Chair of the IPWatchdog PTAB Masters program, and a good friend. Recently, Scott decided to make a change, leaving Ropes & Gray and joining Wolf Greenfield & Sacks and becoming the first partner resident in Wolf’s new Washington, DC, offices. Given the news, I took the opportunity to invite Scott to IPWatchdog headquarters for an interview.

On August 2, inventor advocacy group US Inventor held a webinar on provisions of the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act that are intended to curb abuses impacting small business patent owners at the Patent Trial and Appeal Board (PTAB). While most panelists on the virtual call acknowledged that the PREVAIL Act wouldn’t solve every problem threatening the U.S. innovation ecosystem’s most vulnerable members, there was widespread agreement that the bill would have beneficial impacts if enacted. The webinar was US Inventor’s second on the PREVAIL Act following a virtual call last week with law professor Adam Mossoff and C4IP General Counsel Jamie Simpson.

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.

I was told that elected officials count on—in fact, they need—constituent input to be effective legislators. After my patents were unjustly cancelled at the Patent Trial and Appeal Board (PTAB), I started the journey to do this very thing. Since January of 2022, I have visited Congress and the Senate two dozen times. I have visited over 200 offices telling my story and advocating for the “little” inventors, like me.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential opinion holding that the reissue claims relating to a patent for a floating grill owned by Float‘N’Grill LLC (FNG) were not directed to the original invention and therefore were properly rejected by the U.S. Patent and Trademark Office (USPTO). U.S. Patent No. 9,771,132 is titled “Floating Apparatus for Supporting a Grill” and as issued in September, 2017. After issuance, FNG filed a reissue application for additional claims that were rejected by first the examiner and then the Patent Trial and Appeal Board (PTAB). The original claims required a “plurality of magnets” to which “a flattened bottom side of a portable outdoor grill is removably securable,” while the reissue claims “more generically call for the removable securing of a grill to the float apparatus,” according to the CAFC’s opinion.