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.
On Nov. 7, 2017, the USPTO issued a final rule, set to take effect on December 7, 2017, on attorney-client privilege for PTAB trials. Under the rule, communications between a client and a USPTO patent practitioner/foreign jurisdiction patent practitioner will be privileged just as attorney-client communications. 37 CFR 42.57. Information on the final rule is available here.
The US Patent and Trademark Office released a testing version of the Citation List, as part of the Global Dossier Initiative, a service that provides a list of relevant citations in related applications that share a common priority claim. The Citation List can also be used to view all references cited in the patent family of an application.
In Ex parte McAward, the Board explained that the Supreme Court's decision in Nautilus does not change the PTO's "long-standing approach to indefiniteness" in pre-issuance examination. The Board will continue to apply Packard, i.e., whether a claim is "cast in clear--as opposed to ambiguous, vague, indefinite--terms." The threshold for proving indefiniteness in a district court litigation, however, would be whether the claims define the inventive subject matter with "reasonable certainty," as required under Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). The Board did not address the approach to indefiniteness that the PTO may follow in a post-grant trial proceedings under the AIA.
On Aug. 31, 2017, the Federal Circuit issued a sua sponte order to consider en banc whether the USPTO is entitled to an award of attorneys’ fees, irrespective of a win-or-lose, under 35 USC 145. Nantkwest, Inc. v. Matal, Fed. Cir., No. 2016-1794, 8/31/2017. In a 2-1 decision, a panel had earlier held that the USPTO is entitled to attorneys’ fees from plaintiffs in district court proceedings reviewing the patent office rejections under 35 USC 145. According to the court, the American Rule that each party pay its own attorneys’ fees does not apply where the statutory language explicitly authorizes an award of fees. The panel reasoned that the statutory language “[a]ll the expenses of the proceedings shall be paid by the applicant” entitled an award and noted that the dictionary definition of “expenses” includes attorneys’ fees. In her dissent, Judge Stoll argued that the American Rule erects a strong presumption against fee shifting and Section 145 fails to mention “attorneys’ fees” or provide the necessary congressional directive to make such an award.
The Federal Circuit held that inherent properties are not always obvious and that routine testing does not preclude patentability. Honeywell Int'l Inc. v. Mexichem Amanco Holding S.A., No. 2016-1996 (Fed. Cir. Aug. 1, 2017). Honeywell owns USP 7,534,366 directed to the use of an unsaturated hydrofluorcarbon compound. Mexichem and Daikin filed an inter partes reexam. During the reexam, the examiner rejected several claims as obvious over three prior art references. On appeal to the Board, Honeywell (a) argued that one the references did not teach the use of HFO-1234f with any particular lubricant; (b) submitted evidence that HFO refrigerants were disfavored at the time of invention; (c) secondary references referred to use of PAG lubricant with saturated refrigerants rather than unsaturated refrigerants; (d) submitted evidence of secondary considerations. The Board affirmed the examiner's rejections finding that (a) known disadvantages of using HFO-1234f wouldn't have deterred one of ordinary skill from choosing it; (b) HFO-1234f's stability with PAG lubricants was its inherent property; (c) even though how various refrigerants react with various lubricants is unpredictable, one of ordinary skill in the art would've found the combination by routine testing. Honeywell appealed.
The Federal Circuit reversed the Board's decision finding that the Board erred by (1) improperly relying on inherency to find obviousness because the proper analysis is not whether a property is inherent but whether unknown properties are unexpected; (2) requiring Honeywell to establish that one of ordinary skill in the art would've expected failure; instead in a reexam, the burden is on the examiner to show that one of ordinary skill would've had a motivation to combine the references with a reasonable expectation of success; (3) concluding that unpredictability indicates obviousness; and (4) in rejecting Honeywell's objective evidence of nonobviousness.
Full text of the opinion is available here.
Disclaimer: The content in this blog is solely for informational purposes and does not constitute legal advice.