CAFC says PTAB does not have to allow timely submission of supplemental information in IPR

Several weeks ago, the United States Court of Appeals for the Federal Circuit issued a decision in Redline Detection, LLC v. Star Envirotech, Inc., relating to an inter partes review (IPR) challenge brought by Redline challenging the validity of certain patent claims of U.S. Patent No. 6,526,808 (the “’808 patent”).

After deciding to institute the IPR, the Patent Trial and Appeal Board (PTAB) found in favor of the patent owner. Redline appealed the decision of the PTAB to the Federal Circuit, arguing that it was improperly denied the opportunity to submit supplemental information under 37 C.F.R. §42.123(a) and that the PTAB erred with respect to finding that claims 9 and 10 of the ‘808 patent were not invalid.

The ‘808 patent, owned by Star Envirotech, relates to methods of generating smoke for use in volatile and explosive environments. More specifically, the ’808 patent describes methods for generating smoke that enables the presence and location of leaks in a fluid system to be accurately and visually detected depending upon rate of the air flow through the fluid system under test and whether smoke escapes from the system. The invention allows for the more accurate testing of whether automobile emissions are leaking into the environment.


Is the USPTO ready to add an 8th digit to patents?

At some point in time in the not too distant future, the USPTO will grant U.S. Patent No. 10,000,000. That’s a nice round number, but we just crossed the nine million threshold with the issuance of U.S. Patent No. 9,000,000 on April 7, 2015.  At this pace, the ten million threshold will come sometime in June 2018.

Why even think about U.S. Patent No. 10,000,000 at this time? The simple answer is because it will add one more digit – an eighth digit – to utility patent numbers. Since the dawn of the computer age, computer systems have handled only 7 digit patent numbers. Without deliberate consideration and action, moving to an eighth digit may not be as smooth a transition as you may want to believe.


USPTO to require petition to fix delayed foreign priority claims

The United States Patent and Trademark Office (USPTO) recently published a short Federal Register notice titled Change in Practice Regarding Correction of Foreign Priority Claims.

The USPTO has required that any correction of the application number in a domestic benefit claim after the time period for filing a priority or benefit claim be via a petition to accept an unintentionally delayed benefit claim. Notwithstanding, the USPTO has not historically required a petition with respect to the correction to a foreign priority claim after the time period for filing a priority or benefit claim. This dissimilar treatment of the correction of foreign priority claims and domestic benefit claims results in the publication of a corrected patent application publication reflecting the accurate domestic benefit claim information whenever an applicant corrects the application number in a domestic benefit claim in a pending application, but not whenever an applicant corrects the application number of the foreign application in a foreign priority claim.


On the Record with Patent Commissioner Drew Hirshfeld

On July 30, 2015, Drew Hirshfeld was sworn in as the new Commissioner for Patents. Prior to taking the helm of patent operations as Commissioner for Patents, Hirshfeld served as Deputy Commissioner for Patent Examination Policy. Even before assuming the position of Deputy Commissioner, Hirshfeld was no stranger to senior management, having served two years as the USPTO Chief of Staff for David Kappos. He also served as a Supervisory Patent Examiner as well as a Group Director of Technology Center 2100, overseeing Computer Networking and Database workgroups.

I spoke with Hirshfeld on the record on August 10, 2015. What follows are some of the highlights of the interview. For more please see the complete transcript of our interview.


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.