This is based on an article by Anthony Tridico and Timothy
McAnulty in the March 2014 edition of the CIPA Journal.
1. Since September
2012 over 1,000 petitions have filed at the USPTO’s Patent Trial and Appeals
Board (PTAB) requesting the Board review issued claims. About 70% of petitions
involve electrical/computer patents.
2. The Board has been
proceeding with review in over 80% of petitions.
3. A petitioner must file
a petition for inter partes review
within one year of being served with a complaint for infringement. The Board has issued 2 significant decisions
dealing with this matter, Macauto v BOS GmbH & KG and Motorola Mobility LLC
v Arnhouse. In these decisions patent
owners failed to fulfil all the requirements of service and therefore the one
year bar was not triggered.
4. The conditions for
making amendments to claims are strict.
The amendments must be in response to a ground of unpatentability in the
trial and must also be traceable back to the original claim. To date the Board has not granted any motion
that amended a claim or proposed new claims, apart from cancelling a claim.
5. In Idle Free Systems
v Bergstrom the Board explained that the patent owner needed to specifically identify
the new features in an amendment and show patentable distinction, with the
burden on the patent owner to show patentability. The decision also confirmed amended claims
cannot broaden scope.
6. In Blackberry v
MobileMedia Ideas the patent owner was refused the motion to amend because a
construction was not provided for each new feature, an explanation was not
given for how removal of certain features was responsive to a ground of
unpatentability and because of the deletion of features from claims the new
claims were not traceable to original claims.
7. So far the Board
has only confirmed 11 claims to be patentable (in just 2 inter partes reviews) out of the hundreds that have been challenged.
8. Claim construction
seems to be an important part of determining success. 50% of the time the Board adopts its own construction,
25% of the time it adopts a petitioner’s and 20% of the time it adopts the
patent owner’s. 5% of the time it adopts construction from a district court.
9. The Board is
predominantly looking at the specification to reach a decision on claim construction,
with less weight on expert declarations and prior prosecution.
10. The Board is routinely
deeming some of the proposed grounds from petitioners as redundant and so it
would be wise for petitioner to stick to their strongest arguments. However the Board has allowed multiple trials
to be instituted against the same patent between the same parties where the
petitioner has filed multiple petitions to avoid grounds being found to be
redundant.
You may also wish to see related articles Top
10 Points on Patent Developments and Case Law in the US in 2013 and 10
Points on US Patent Law Developments Focusing on Biotech.
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