Patent Law Practice Center

PTO Proposes to Eliminate BRI at PTAB

The USPTO recently announced proposed rulemaking that would change the prior policy of using the Broadest Reasonable Interpretation (“BRI”) standard for construing unexpired and proposed amended patent claims in PTAB proceedings under the America Invents Act and instead would use the Phillips claim construction standard. The new standard proposed by the USPTO is the same as the standard applied in Article III federal courts and International Trade Commission (“ITC”) proceedings, a change critics of the PTAB process have urged for many years in order to bring uniformity to post grant challenges across forums.

“Having AIA trial proceedings use the same claim construction standard that is applied in federal district courts and ITC proceedings also addresses the concern that potential unfairness could result from using an arguably broader standard in AIA trial proceedings,” the NPRM says. “Under the proposed approach, the Office would construe patent claims and proposed claims based on the record of the IPR, PGR, or CBM proceeding, taking into account the claim language itself, specification, and prosecution history pertaining to the patent. The Office would apply the principles that the Federal Circuit articulated in Phillips and its progeny.”

(more…)

PTAB Fails to Consider Arguments in Reply Brief

On Friday, June 1st, the Court of Appeals for the Federal Circuit issued a decision in In re: Durance striking down a decision by the Patent Trial and Appeal Board (PTAB) that affirmed a patent examiner’s obviousness rejection of a microwave vacuum-drying apparatus and associated method. The Federal Circuit panel consisting of Judges Alan Lourie, Jimmie Reyna and Raymond Chen determined that the PTAB erred in not considering arguments offered in the patent applicant’s reply brief, which were properly made in response to the examiner’s answer.

In September 2014, the examiner issued a final rejection, which rejected all 37 claims of the patent application on 35 U.S.C. § 103 for obviousness and 35 U.S.C. § 112 for not meeting the written description requirement and lack of enablement. The obviousness finding was based on two pieces of prior art: U.S. Patent No. 6442866, titled Method and Apparatus for Drying or Heat-Treating Products (“Wefers”) and issued in September 2002; and U.S. Patent Application No. 20050019209, titled Method and Device for Sterilizing Containers (“Burger”) and filed in July 2002. The examiner rejected most of the ‘895 patent applications claims after finding that Wefers disclosed every limitation of claim 1 except for the tumbling limitation, which was itself disclosed by Burger. The examiner rejected Durance’s argument that rotating the container to enhance tumbling of the organic material was not present in the Wefers and Burger combination; the examiner found that the organic material’s tumbling was an inherent function of all rotating containers. On the indefiniteness finding, the examiner found that the patent application’s specification did not meet the written description requirement under Section 112 because it did not discuss the rotational speed necessary to tumble the organic material.

After an examiner interview in December 2014, the examiner withdrew the rejection based on the Section 112 grounds but maintained the obviousness rejection based on Burger’s teaching of a transportation means rotating a container through a vacuum chamber from the inlet to the outlet. Durance appealed to the PTAB, arguing that Burger taught the application of plasma to the surface of containers and not the rotation of the containers to tumble the contents for balancing out the microwave radiation applied to the cylinders. Durance further argued that Wefers taught away from agitating products during transportation because it stressed the “gentle continual transport” needed to reduce maintenance expenses. The examiner answered this argument based on new grounds that there was no structural difference between Durance’s claimed invention and the combination of the prior art references. Although Durance argued that the examiner’s understanding of structural identity for rejection, which had never before been articulated, was extremely inaccurate as the claimed invention in the ‘895 patent application required the use of gears, not simply gravity. The PTAB sided with the examiner, finding that Durance’s arguments only addressed individual references and not the combination.

Durance appealed for rehearing by the PTAB, arguing that the Board erroneously ignored reply brief arguments related to the structural identity rejection. In not addressing arguments that the claimed structure is different than the Burger structure, the PTAB “misapprehend[ed] the law” on inherency by ignoring the argument that structural identity cannot be used to show that a method claim is inherently performed by a combination of prior art references. In denying the request for rehearing, the PTAB stated that it did not misapprehend the doctrine on inherency because it didn’t invoke that doctrine in affirming the examiner’s rejection. “In the interest of fairness,” the Board did consider Durance’s reply brief argument that the amount of material packed into the container affects whether the material would tumble, but the Board reiterated that it would not consider other reply brief arguments.

On appeal to the Federal Circuit, Durance argued that substantial evidence doesn’t support the PTAB’s finding that the combination of the prior art references taught the tumbling limitation either expressly or inherently. Durance also argued that the PTAB lacked substantial evidentiary support to show that a skilled artisan would modify Wefers to include the rotation feature disclosed by Burger.

In its discussion of the issues in the appeal, the Federal Circuit opined that “the Court is not confident in the Patent Office’s reasoning for its rejection of the Application” based upon the shifting arguments offered in the patent examiner’s rejections, as well as the PTAB’s argument on appeal that the Federal Circuit should find inherency in the first instance after the PTAB told Durance that inherency was never invoked. In analyzing 37 C.F.R. § 41.41(b), the relevant statute under which the PTAB waived Durance’s reply brief arguments, the Federal Circuit noted that the statute allows a patent owner to include responses to an examiner’s answer in a reply brief. Nothing in the statute bars the patent owner from addressing new arguments made by the examiner that were not articulated in the Final Office Action, the appellate court found.

The PTAB’s refusal to consider Durance’s reply brief arguments on structural dissimilarity between the patent application and the prior art references required vacating the agency’s decision and remanding the case back to the Board, the Federal Circuit held.

Director Iancu delivers first policy speech at U.S. Chamber of Commerce

On April 19, 2018, the Global Intellectual Property Center (GIPC) of the United States Chamber of Commerce hosted a symposium titled Investing in American Innovation: Is the U.S. Patent Environment Promoting or Limiting Investment? The first speaker of the day, the keynote speaker, was USPTO Director Andrei Iancu, who in an important policy speech, told those gathered at the U.S. Chamber of Commerce that the U.S. patent system is at an inflection point, and that the nation cannot continue down the path we are currently on if we as a nation want to remain economically successful.

“We will not continue down the same path,” Iancu pledged emphatically during what can only be described as a major policy speech that gives an important look into what the new Director thinks on a variety of issues.

“The patent grant is less reliable today than it should be. This onslaught has come from all directions,” Iancu explained. “The rhetoric has focused on certain abuses instead of the incredible benefits the system brings.”

(more…)

USPTO Withdraws CAFC Brief, Actively Considering PTAB Practice

Josh Malone, the inventor of Bunch-o-Balloons; and Telebrands Corporation, the power behind As Seen on TV,  have been fighting over Malone’s invention of one of the most popular new toys to hit the market in years. Using Malone’s innovation, it is possible to fill 100 water balloons in under 60 seconds. The invention works like a charm, and it flies off the shelves of big-box retailers like Costco.

Telebrands has lost patent infringement decisions repeatedly in federal district court to Malone’s company, Tinnus Enterprises. Telebrands has even lost at the United States Court of Appeals for the Federal Circuit. Indeed, every federal judge and every federal jury that has decided cases in this ongoing battle has ruled for Malone and Tinnus.

Telebrands has done better at the Patent Trial and Appeal Board. Notwithstanding Telebrands successes at the PTAB, recently the PTAB published final written decisions (here and here) upholding claims from two of Tinnus’ patents — U.S. Patent No. 9,242,749 and U.S. Patent No. 9,315,282 — the same patents that a federal jury found infringed and which lead to an award of $12.4 million in damages last November. These decisions represent a rare case where the PTAB agreed with a jury.

(more…)

Senate Confirms USPTO Director

Andrei Iancu was confirmed by the United States Senate on February 5 to become Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office.

Joe Matal, who has been in charge at the USPTO in a quasi-Acting capacity is expected to ultimately become the next Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office.

The Iancu vote, as expected, resulted in a unanimous confirmation. The final vote in the Senate in favor of Iancu’s nomination was 94 to 0.

(more…)