USPTO proposes new rules for PTAB administrative trials

Several weeks ago, the United States Patent and Trademark Office published proposed rule changes that will, if adopted, amend the rules for practice before the Patent Trial and Appeal Board (PTAB). The deadline to comment on the USPTO proposed rule changes will be 60 days after publication in the Federal Register, which should be Monday, October 19, 2015. Comments should be sent by electronic mail message over the Internet addressed to: Comments may also be submitted by mail addressed to: Mail Stop Patent Board, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Lead Judge Susan Mitchell, Patent Trial Proposed Rules.

Claim Construction

In the initial request for comments, the Office asked the patent community, “Under what circumstances, if any, should the Board decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?”

Not surprisingly, by and large, the Office decided to stick with the broadest reasonable interpretation (“BRI”) approach, explaining that the United States Court of Appeals for the Federal Circuit recently determined that that the Office is authorized to employ the broadest reasonable interpretation approach when construing terms of an unexpired patent at issue in an inter partes review. The Office did, however, choose to adopt the Phillips standard for claim construction for claims of a patent that will expire prior to the issuance of a final decision.

Motions to Amend

One of the biggest issues many have had with current PTAB trial practice relates to the fact that the law says that the patent owner has a right to amend, but that well over 90% of the time, the PTAB denies patent owners the ability to amend. The Office asked for comments on the following topic: “What modifications, if any, should be made to the Board’s practice regarding motions to amend?”

In declining to make substantive changes to amendment practice, the Office explained that  MasterImage 3D, Inc. v. RealD, Inc. Case IPR2015-00040 clarifies that a patent owner must argue for the patentability of the proposed substitute claims over the prior art of record, including any art provided in light of a patent owner’s duty of candor, and any other prior art or arguments supplied by the petitioner, in conjunction with the requirement that the proposed substitute claims be narrower than the claims that are being replaced. Further, the decision also stands for the proposition that the burden of production shifts to the petitioner once the patent owner has made its prima facie case for patentability of the amendment, although the ultimate burden of persuasion remains with the patent owner.

Other Issues

Other issues addressed in the proposed rules include: (1) amending the rules to allow the patent owner to file new testimonial evidence with its preliminary response; (2) the Office declining to adopt a mandatory rule regarding additional discovery of secondary considerations; (3) permitting a patent owner to raise a challenge regarding a real party-in-interest or privity at any time during a trial proceeding; (4) declining a proposal that would allow a petitioner’s reply as of right in the pre-institution phase of an AIA review; (5) denying to provide for small entity and micro-entity filing fee reduction for reviews under AIA; and (6) Rule 11-type certification for all papers filed with the Board with a provision for sanctions for noncompliance.

Honeywell Patents: From Aircraft Systems to Rechargeable Fuel Cells 

flight plan deviationA variety of technologies are covered in patents issued in recent weeks to Honeywell.

U.S. Patent No. 9086280, titled Aircraft Display Systems and Methods with Flight Plan Deviation Symbology, protects an aircraft system with a deviation module that receives a flight plan to a waypoint and compares a predetermined time of arrival to the estimated time of arrival as well as a visual display coupled to the deviation module which can indicate lateral, vertical and/or time deviation in respect to the flight plan. This technology supposedly improves upon conventional aircraft systems which can detect lateral and vertical deviation but do not take time deviation into account so well.

A system designed to reduce the risk that aircraft can collide while being taxied on the ground is at the center of U.S. Patent No. 9082299, entitled Methods and Systems for Taxiway Traffic Alerting. The patent claims a method performed by a system located on an airplane which involves determining whether the aircraft is on the ground, determining that the airplane is in motion, receiving information from a ground control vehicle which indicates when the ground control vehicle will pass the airplane, and generating a potential collision alert if the determined distance is less than a safe distance threshold based upon the wingspans of both the ground control vehicle and the airplane. This innovation for preventing ground aircraft collisions should improve upon radar monitoring systems which can have a multitude of blind spots.

breathing airHoneywell is also developing technology for emergency responders ready to jump into dangerous situations to save lives, described in U.S. Patent No. 9032952, which is titled Apparatus Having Cross Conditioned Breathing Air. The self-contained breathing apparatus disclosed here includes a tank of compressed air, a face mask, a coaxial conduit extending from the tank to the mask, two valve assemblies coupled to the coaxial conduit and another conduit extending from the second valve assembly and connected to a protective garment. The innovation defines flow paths for inhaled and exhaled air in such a way that helps to cool air from a warm environment prior to being breathed in by a firefighter.

diagnosis buildingBuilding maintenance staff should find that their jobs are made a little easier through the Honeywell invention protected by U.S. Patent No. 9070174, titled Providing a Diagnosis of a System of a Building. The computer-implemented method claimed here involves displaying an identified system of a building, identifying a number of related components within that building system and identifying a relationship between those components that includes an operational status of the component. This invention allows building maintenance staff to better identify an operational issue with any building system while minimizing the staff expertise and the amount of time it takes to address such an issue.

Fuel cell technologies are also being developed by Honeywell. The company received U.S. Patent No. 9065128, which is titled Rechargeable Fuel Cell. The power generator protected by this patent is comprised of a container holding a flexible fuel cell stack, a metal hydride fuel for producing hydrogen within the container, a perforated anode support surrounding and in close thermal contact with the fuel and a perforated cathode electrode, and an anode both supported by the container and exposed on the container’s outside. The new configuration supposedly supports a more stable temperature for the power generator, improving the production of hydrogen fuel from metal hydride.

Honeywell also recently received U.S. Patent No. 9039917, titled Methods for Manufacturing Components from Articles Formed by Additive-Manufacturing Processes. The method for manufacturing a component claimed here involves forming a diffusion coating comprised of an additive surface layer covering a diffusion layer on a first intermediate article and removing the coating from a first intermediate article to form a second intermediate article. This novel additive manufacturing process purportedly produces components with improved structural integrity, mechanical properties and other characteristics that make it better prepared for hot isostatic processing that removes internal defects.

On the Record with Rudy Telscher

On the Record with Rudy Telscher


Rudy Telscher, a partner with Harness Dickey, represented Octane Fitness in one of the most important patent cases decided by the United States Supreme Court over the last decade. The Supreme Court’s decision in Octane Fitness v. Icon Health & Fitness granted district court judges broad discretion to award attorneys’ fees as they see fit in patent litigation. This decision, and a decision in a companion case (i.e.,  Highmark, Inc. v. Allcare Health Management System, Inc.) derailed patent reform during the 113th Congress. (more…)

USPTO and JPO Announce Patent Cooperation Treaty Agreement

The United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) have recently announced an implementation agreement under which the JPO will act as an available International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for certain international applications filed with the USPTO as the Receiving Office, under the Patent Cooperation Treaty (PCT). The USPTO and JPO are two of the intellectual property offices authorized to conduct international searches and international preliminary examinations in the PCT system.

The PCT is an international agreement that simplifies the filing of patent applications in its contracting countries. A PCT application has the effect of a national application for a patent in any of the designated PCT countries. International applicants receive an International Search Report and an International Preliminary Report on Patentability to help them determine if an application meets basic patentability criteria before committing to the high cost of translating and entering the national stage in one or more PCT countries.

The agreement took effect on July 1, 2015.  The agreement is intended to end on June 30, 2018, but as is typical with these types of bilateral agreements, the USPTO says that it may be continued by mutual written consent.

The addition of JPO as an available ISA and IPEA will allow applicants additional flexibility in choosing an international authority based on the technology disclosed in the international application.

“This latest collaboration between USPTO and JPO exemplifies the cooperative spirit between our Offices and benefits applicants by providing an additional option for examination of their international applications directed to green technology,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle Lee.

Under the agreement, JPO may act as an available searching authority and preliminary examining authority, provided that:

  1. The applications are submitted in the English language.
  2. The claims of the application are directed to the field of green technology as defined by certain International Patent Classification classes.
  3. The JPO has not received more than 5,000 international applications from the USPTO during the three-year period from July 1, 2015 to June 30, 2018, and not more than 300 applications per quarter during the first year, and not more than 475 application per quarter during the second and third years.
  4. The JPO is chosen as a competent authority by the applicants.

Further details on the use of JPO as an ISA/IPEA for applications filed in the US receiving office, including the International Patent Classification classes which define the field of green technology according to this agreement, will be made available on the USPTO Web site.

While 5,000 international applications seems like a small number, the USPTO has in recent years overestimated the popularity of this type of program. Thus, bandwidth to participate shouldn’t be an issue, at least if past history is any guide.

Chrome to Discontinue Java; Will Impact EFS-Web and Private PAIR

In April 2015, Google Chrome removed the default ability to use the Java plug-in for browser version 42. This impacts a practitioner’s ability to access EFS-Web and Private PAIR because Java is required for your authentication into these systems. Currently, Chrome has a temporary workaround that allows users to continue to use a Java plug-in to continue to log into EFS-Web and Private PAIR. This temporary workaround will not last for long, so the United States Patent and Trademark Office (USPTO) has recently advised practitioners that they need to come up with a Plan B if they use Chrome to access EFS-Web and Private PAIR.

According to Google, this temporary workaround will only work through September 2015, when Google Chrome plans to completely end their support for Java plug-ins with their newest browser, Chrome versions 45 and above. Therefore, Chrome users who will be using version 45 and above will no longer be able to use the temporary workaround and thus will not be able to log into EFS-Web or Private PAIR after that date.

Oracle is recommending the use of alternative browsers such as Firefox, Internet Explorer, and Safari. For additional information regarding Java and Chrome please visit: How do I use Java with the Google Chrome browser?

Although Firefox, Internet Explorer, and Safari browsers should continue to work with EFS-Web and Private PAIR, the USPTO says that there is always a possibility that these providers may decide to discontinue support of Java plug-ins as well. Thus, the USPTO is closely monitoring announcements on upcoming releases of new browsers for any changes. The USPTO has said they will keep the IP Community informed of any news related to this issue. Furthermore, the USPTO says they are investigating whether there are possible strategies to mitigate the impact on practitioners. The Office is also working on a longer-term plan to improve the overall authentication process without compromising privacy and security.