Patent Law Practice Center

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.

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CAFC rules IPR petitioner bears burden to establish entitlement to provisional priority

Several weeks ago, the United States Court of Appeals for the Federal Circuit issued a decision in Dynamic Drinkware v. National Graphics, which asked the Court to determine who has the burden with respect to whether a provisional patent application sufficiently supports a later-issued patent so as to become effective prior art as of the provisional filing date in an inter partes review.

National Graphics owns U.S. Patent 6,635,196, which is directed to making molded plastic articles bearing a “lenticular” image. The ’196 patent issued on October 21, 2003, from an application filed on November 22, 2000. The ’196 patent claims the benefit of U.S. Provisional Application 60/211,112, filed on June 12, 2000.

Dynamic petitioned the PTO for inter partes review of the ’196 patent. In its petition, Dynamic argued that claims 1, 8, 12, and 14 of the ’196 patent were anticipated by U.S. Patent 7,153,555 (“Raymond”). The application for Raymond was filed on May 5, 2000, claiming the benefit of U.S. Provisional Application 60/182,490 (the “provisional application” or “Raymond provisional application”), filed on February 15, 2000. The PTO granted the petition in part, and instituted trial on claims 1 and 12.

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USPTO seeks comment on post grant initiation pilot program

The United States Patent and Trademark Office (USPTO) has published a request for comments on a proposed pilot program pertaining to the institution and conduct of post grant administrative trials. The America Invents Act (AIA), which was signed into law on September 16, 2011, provides for the following post grant administrative trials: Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method Review (CBM). These new administrative procedures became available on September 16, 2012, one year after the signing of the AIA.

The USPTO currently has a panel of three Administrative Patent Judges (APJs) determine whether to institute a trial, and then normally has the same panel conduct the trial, if a decision is made to institute a trial. The USPTO is now considering a pilot program where the determination of whether to institute an IPR would be made by a single APJ. If the decision is to institute a proceeding, two additional APJs would be assigned to the IPR, joining the APJ who decided to institute the trial. (more…)

House Judiciary Nixes CBM Extension

On Thursday, June 11, 2015, the House Judiciary Committee held a hearing for the purpose of marking up “the Innovation Act.”

One of the issues that took up a significant amount of time during the first half of the hearing was an amendment submitted by Congressman Darrell Issa regarding a proposed extension of covered business method (“CBM”) review. Those familiar with the America Invents Act (AIA) will undoubtedly recall that CBM reviews were ushered in as one of the three new post grant proceedings that could be used to challenge issues U.S. patents. The program was conceived to be temporary, and is scheduled to sunset on September 16, 2020. Issa’s amendment would have postponed the termination date of the program until December 31, 2026.

Unlike inter partes review (“IPR”), a petition for a CBM may NOT be filed unless the real party-in-interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent. “Charged with infringement” means “a real and substantial controversy regarding infringement of a covered business method patent such that the petitioner would have standing to bring a declaratory judgment action in Federal court.” 37 CFR 42.302(a). Additionally, unlike with IPR, a CBM proceeding can raise issues surrounding both patent eligibility under 35 U.S.C. 101 and sufficiency of disclosure under 35 U.S.C. 112.

Issa stated during the hearing that, at the time Congress passed the AIA, the idea was to create CBM review for a trial period and the program would be extended if successful. Issa is mistaken. The complete name of the process even has the word “transitional” in the title. The entire purpose of CBM review was to allow for challenges to certain financial business method patents in a post grant proceeding that could raise patent eligibility and sufficiency of disclosure. Those issues are off the table in IPR. They can be raised in Post Grant Review (PGR), but PGR is only available to challenge patents that were examined under the first-to-file provisions of the AIA. Thus, Congress wanted to allow for a form of PGR for financial business method patents granted under pre-AIA first-to-invent rules.  Thus, there is a time limit to the useful period of this special variety of post grant review.

“We should be ending [CBM] rather than extending it,” Congressman John Conyers (D-MI) stated in response.

Congressman Collins (R-GA) also explained that he cannot support extending CBM, saying that “a property right should be a property right.” Collins also expressed confusion regarding why this matter is pressing at the moment, saying: “I am confused as to why we are considering the extension of a program that is scheduled to sunset in 2020. Why are we debating this here today… do we really know how CBM will affect our economy… we should be having this debate in 2020.” Ultimately, Collins urged his colleagues to oppose this “premature amendment.”

Congresswoman Suzan DelBene (D-WA) echoed the comments of Collins, but also took issue with earlier comments of those in support of the amendment who said that there was no evidence that CBM has been inappropriately expanded beyond financial services patents. DelBene pointed out that there have, indeed, been instances where the Patent Trial and Appeal Board (PTAB) has been accused of expansively interpreting its own jurisdiction beyond what Congress envisioned when the AIA was passed.

The amendment to extend CBM was defeated by a vote of 18-13. At least for now, it is not in the House bill. If and when the bill gets considered on the floor of the House, extension of CBM could resurface in one way or another.

DirecTV Reexamination Request of Satellite Broadcast Patent One of the Requests Filed the Week of June 18, 2012

Here is our latest weekly installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor…

Last Monday, DIRECTV asked for reexamination of a patent owned by Global Communications and claiming a satellite broadcast receiving and distribution system (see inter partes Request No. (1)). Global has sued a number of companies – presumably DIRECTV partners – for infringing that patent, as well as seven others.

Reexamination was requested for U.S. Patent No. 6,770,748 owned by Santaris Pharma and claiming nucleotide analogues that suitable as antisense molecules for treatment of cancer and AIDS patients (see inter partes Request No. (2)).  The Patent Office records do not yet show the identity of the requester, but it might be Isis since Santaris and Isis have fought over rights to this technology in the past.

Yet another request for reexamination was filed against a MobileMedia Ideas patent, perhaps by Apple or HTC – the Patent Office records do not say (see ex parte Request No. (6)).

Finally, DuPont and Monsanto are tussling over a soybean oil patent (see inter partes Request No. (7)).

The following inter partes requests were filed:

(1) 95/002,022 (electronically filed) – U.S. Patent No. 6,397,038 entitled SATELLITE BROADCAST RECEIVING AND DISTRIBUTION SYSTEM and owned by Global Communications.  Filed June 18, 2012, by DIRECTV.  The ‘038 patent is currently the subject of a litigation styled Global Communications v. PDI Communications et al.(Case No. 4:11-cv-451 (N.D. Fla.).

(2) 95/002,023 (electronically filed) – U.S. Patent No. 6,770,748 entitled BICYCLONUCLEOSIDE AND OLIGONUCLEOTIDE ANALOGUE and owned by Santaris Pharma.  Filed June 18, 2012, perhaps by Isis.

(3) 95/002,024 (electronically filed) – U.S. Patent No. 7,707,823 entitled METHOD AND APPARATUS FOR MANIPULATING AND DILUTING INTERNAL COMBUSTION ENGINE EXHAUST GASES and owned by Leseman Davis, LLC.  Filed June 19, 2012.

(4) 95/002,025 (electronically filed) – U.S. Patent No. 7,320,031 entitled AUTOMATIC, PERSONALIZED ONLINE INFORMATION AND PRODUCT SERVICES and owned by Personalized User Model (PUM).  Filed June 20, 2012, perhaps by Google.  The ‘031 patent is currently the subject of a litigation styled Personalized User Model v. Google (Case No. 09-cv-525 (D. Del.)).

(5) 95/002,026 (electronically filed) – U.S. Patent No. 7,917,401 entitled SYSTEMS AND METHODS FOR OBTAINING HEALTH AND FINANCIAL INFORMATION WITH A HANDHELD DEVICE and owned by Epic Technology.  Filed June 20, 2012, by eBay.  The ‘401 patent is currently the subject of a litigation styled Epic Technology v. Shapsavvy (Case No. 2:12-cv-249 (D. Utah)).

(6) 95/002,027 (electronically filed) – U.S. Patent No. 8,073,744 entitled METHOD TO PROVIDE LIQUID FUNDS IN THE ONLINE AUCTION AND MARKETPLACE and owned by Venture Lending & Leasing VI.  Filed June 22, 2012, by Capital Access Network.

(7) 95/002,028 (electronically filed) – U.S. Patent No. 7,790,953 entitled SOYBEAN SEED AND OIL COMPOSITIONS AND METHODS OF MAKING SAME and owned by Monsanto.  Filed June 22, 2012, by DuPont.

(8) 95/002,029 (electronically filed) – U.S. Patent No. 7,925,531 entitled METHOD OF DELIVERING GOODS AND SERVICES VIA MEDIA and owned by TrialCard Systems.  Filed June 22, 2012.  The ‘531patent is currently the subject of a litigation styled TrialCard Systems v. P.S.K.W. et al. (Case No. 3:11-cv-5693 (D.N.J.)).

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