Effective 11/13/18, the PTAB's claim construction standard changes to Phillips from the broadest reasonable interpretation (BRI) for all IPR, PGR and CBM petitions filed on or after 11/13/18.
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On August 20, 2018, a Federal Circuit panel, in a unanimous decision regarding a design patent application for a shoe bottom design, ruled that Section 112 requirements of enablement and definiteness may be satisfied by a single, 2D plan-view drawing as the ornamental design is capable of being disclosed and judged from such 2D view. In re Maatita, No. 17-2037 (Fed. Cir. Aug. 20, 2018). Applicant Ron Maatita filed a design patent application covering the design of an athletic shoe bottom with two figures showing a plan view of the claimed design. Examiner objected that the two figures were identical except for the unclaimed surrounding environment and rejected the single claim for failing to satisfy the enablement and definiteness requirements of 35 USC 112. Applicant responded that the figures represented the same embodiment and that the omission of certain design elements only affected the breadth of the claim. The examiner again rejected the claim reasoning that the examiner prepared four 3D rendering show different implementation of the 2D view and therefore, the claim failed to satisfy Section 112. The Board affirmed the examiner's decision. In reversing the Board decision, the Federal Circuit reasoned that the shoe design is similar to that of a rug, which is capable of being viewed and understood in two-dimensions through a plan-view illustration.
Full text of the opinion is available here. On July 27, 2018, in a 7-4 decision the en banc court of the Federal Circuit held that the American Rule prohibits courts from shifting attorneys' fees from one party to another absent Congress' specific and explicit directive and that the USPTO is not entitled to such fees under 35 USC 145. Nantkwest, Inc. v. Iancu, No. 16-1764 (Fed. Cir. July 27, 2018) (en banc).
In this case, the Examiner rejected an application directed to a method of treating cancer based on obviousness and the Board affirmed the decision. The applicant sought review in the district court (E.D. Va.) under 35 USC 145 and the court issued a summary judgment in favor of the USPTO. USPTO then sought reimbursement of expenses for the district court proceeding under Section 145 including attorneys fees of over $78,000. The district court denied the fees citing the American rule which requires each litigant to pay for his/her attorney's fees. On appeal, a Federal Circuit panel reversed the decision and the en banc court ordered review sua sponte. The en banc court affirmed the district court's decision in a 7-4 decision. Writing for the majority, Judge Stoll reasoned that the word "expenses" does not include an implicit authorization to award attorneys fees under Section 145. According to the Court, the existence of several Patent Act provisions awarding attorneys fees demonstrates Congress' use of "specific and explicit" language in the Patent Act to shift fees when it so desired. Judge Prost, in her dissent joined by Judges Dyk, Reyna and Hughes, argued that the text of Section 145 imposing "all expenses" on the applicant displaces the American Rule. Full text of the opinion is available here. On July 1, 2018, USPTO, EPO, JPO, KIPO, and SIPO (collectively, the "IP5") launched a new PCT Collaboration Search and Examination Pilot that allows examiners from all five offices to collaborate on the search and examination of a single international application. The result is an international search report and written opinion from the chosen international searching authority based on contributions from all participating offices. Applicants will have the benefit of search conducted by multiple examiners in different languages with no extra cost.
On May 30, 2018, the USPTO proposed rules to mandate e-filing of trademark applications based on Section 1 and Section 44 of the Lanham Act, and to require the designation of an e-mail address for receiving USPTO correspondence. The proposed rule also requires e-filing of all submissions including responses to Office Actions, maintenance declarations, renewal applications, international applications, subsequent designations, and direct filings with the USPTO relating to extensions of protection through the international registration system. More details are available here.
On May 8, 2018, the USPTO announced its proposed rulemaking for claim construction standard in PTAB proceedings. The PTO proposed to amend the rules to require the PTAB to interpret the claims in IPR/PGR/CBM proceedings using the same standard as applied in federal district courts and the USITC, and to consider any prior claim construction determination concerning a term of involved claim in a civil action or ITC proceeding that is timely made in the PTAB proceeding. The proposed changes would replace the BRI standard with the claim construction standard used in federal district courts and would be consistent with the PTO's current approach for interpreting claims in an expired patent. Full text of the notice is available here.
On April 26, 2018, USPTO issued guidance on the impact of the Supreme Court's decision in SAS Institute Inc. v. Iancu on AIA trial proceedings. According to the guidance, PTAB will proceed as follows: (1) it will institute as to all claims or none; if it institutes a trial, it will institute on all challenges raised in the petition; (2) for pending trials in which panel instituted trial on all challenges raised in the petition, panel will continue with the proceeding in normal course; (3) for pending trial in which a panel instituted trial only on some of the challenges raised in the petition, panel will issue a supplemental order on all challenges raised in the petition, and take action to manage trial proceeding including permitting additional time, briefing, discovery and/or oral argument, depending on the stage of the proceeding.
Full text is available here. On April 19, 2018, the USPTO issued a memorandum to address changes in patent examination procedure in light of the Federal Circuit's decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). In Berkheimer, the Federal Circuit held that the question of whether certain claim limitations represent well-understood, routine, conventional activity is a question of fact; the court reaffirmed this standard in subsequent cases regarding judgment on the pleadings and judgment as a matter of law.
USPTO now requires an examiner to conclude that an element or combination of elements represent well-understood, routine, conventional activity only when the element(s) is widely prevalent or in common use in the relevant industry. This determination is distinct from patentability over 102/103 prior art. The examination procedure now requires: (1) a citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s); it cannot be based on the fact that the specification is silent with respect to describing such element; (2) a citation to one or more court decisions noting the well-understood, routine, conventional nature of the additional element(s); (3) a citation to a publication (book, manual, review article, or other source); (4) statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s); this option should be used only when the examiner is certain based upon his/her personal knowledge. Full text of the memo is available here. On Nov. 16, 2017, the USPTO issued new procedures for cases remanded from the Federal Circuit. The Standard Operating Procedure (SOP) provides guidance for panels in preparing for remand meetings and guidance to parties on remand procedures. The potential topics for such remand meetings may include the procedural history, issues on remand, any contemplated procedures for the proceedings on remand, and policy considerations. The SOP suggests parties in remanded trial cases are to contact the Board within 10 days and encourages parties to seek agreement on, among others, additional briefing, length of briefing, subject matter limitations on briefing, and briefing schedule. Full text is available here.
On Nov. 14, 2017, the USPTO issued a final rule revising certain patent fees including increasing the fees for inter partes review. Effective Jan. 16, 2018, the PTO will increase a majority of fees including filing fees for utility patents, patent search filing fees, post allowance fees and PTAB fees. The IPR review request fee for up to 20 claims will be $15,500 and IPR post-institution fee for up to 15 claims will be $15,000. More information is available here.
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Disclaimer: The content in this blog is solely for informational purposes and does not constitute legal advice.
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