Brinks Gilson & Lione attorney: “New Patent Office study confirms motions to amend in PTAB proceedings have been largely unsuccessful”

James Cleland, a shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the nation’s largest intellectual property law firms, says a United States Patent Office’s (USPTO) study released May 9 on the Patent Trial and Appeal Board (“PTAB”) confirms that motions to amend have been largely unsuccessful.

In response to claims by patent owners that PTAB has raised the bar too high to amend claims of a patent in response to validity challenges under the America Invents Act (“AIA”), the USPTO conducted a detailed study of all motions to amend in post-grant proceedings to date. The study found that of 4,850 total petitions filed since September 16, 2012, 1,539 have resulted in completed trials and 743 have trials pending. Of those 1,539 completed trials, a patent owner has filed a motion to amend in 192 of the completed trials. Of those 743 cases that are still pending trial, a patent owner has filed a motion to amend in 34 instances.

Accordingly, of the 2,282 total instances in which the PTAB instituted trial in an AIA challenge, a motion to amend has only been filed in approximately 10% of the cases.

“The data establishes that patent owners are not attempting to amend their claims very often,” Cleland said. “Further data provided by the USPTO may suggest why: only approximately 5% of all motions to amend have been at least partially successful and led to the issuance of at least one new amended claim. However, it is also worth noting that of the six motions that were granted at least in part, most of those successful motions have been adjudicated in the last year or two.”

Cleland is referring to data provided by the USPTO that shows that of the 192 motions to amend in trials already completed, the PTAB has rendered a substantive decision on the motion to amend in 118 cases. The other cases either settled before a decision on the motion or involved the cancellation of claims, not the amendment of claims. Of the 118 cases involving a PTAB ruling, two of the motions to amend were granted in full, four were granted in part, and 112 were denied.

Cleland says the USPTO’s study suggests that it is still difficult to amend claims during post-grant proceedings, and that it is not a tool frequently used by patent owners.

“Despite the study results, though, the PTAB is still encouraging patent owners to file motions to amend,” Cleland said. “This may suggest that the PTAB judges will start to be more receptive to motions to amend and that we may see an uptick in the success rates of these motions in the near future.”

At Brinks, Cleland’s practice focuses on patent, trademark, copyright, trade secret and unfair competition litigation in a broad range of technologies including the chemical, automotive, materials science, mechanical, electrical and medical device arts, as well as in client counseling, opinion and licensing work in those same areas. His litigation experience includes trials, preliminary injunction hearings, Markman hearings summary judgment proceedings and all aspects of fact and expert witness discovery, spanning federal courts across the country. Cleland also specializes in post grant review proceedings before the Patent Trial and Appeal Board.

Brinks Gilson & Lione
The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property. Brinks is one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them protect and enforce their intellectual property rights. Brinks lawyers provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law. More information is at www.brinksgilson.com.

Brinks Gilson & Lione attorney reviews USPTO’s proposed changes to the America Invents Act

ANN ARBOR – Sept. 9, 2015 – On August 19, 2015, the U.S. Patent and Trademark Office (PTO) announced a second round of proposed changes to the rules for America Invents Act (AIA) proceedings based on comments and feedback the PTO has received in the past year. Jon H. Beaupré, a shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., says the proposed changes have been eagerly anticipated.

“The USPTO recognized that although its new proceedings are working well, they can still be improved,” Beaupré said.

According to Beaupre, the proposed rules would implement the following key changes: allowing patent owners to submit a broader scope of evidence with a preliminary response; imposing enhanced certification requirements, akin to FRCP Rule 11; and clarifying that the broadest reasonable interpretation (BRI) standard applies in all cases except for patents that will expire during the proceedings. The proposed rules package also addresses several other topics and provides PTO commentary explaining why no rules changes are proposed for certain topics. Beaupre highlights the proposed changes below.

Patent Owner’s Preliminary Response
The PTO proposes amending its rules to allow the patent owner to file new testimonial evidence with its preliminary response, with the goal of preserving the petitioner’s right to challenge statements made by the patent owner’s declarant. The proposed rules expressly provide that no right of cross-examination of a declarant exists before institution so as to meet the three-month statutory deadline for issuing a decision on institution. The PTO proposes, however, amending the rules to provide that any factual dispute that is material to the institution decision will be resolved in favor of the petitioner for purposes of making a determination about whether to institute.

Rule 11-Type Certification
The PTO proposes amending 37 CFR § 42.11, which prescribes the duty of candor owed to the Office, to impose on all papers filed with the Board requirements that closely mirror Rule 11 of the Federal Rules of Civil Procedure. The amendment will maintain the existing language of the duty of candor while adding three paragraphs regarding the Rule 11-type certification. Unlike Rule 11, the proposed rules do not include a provision for monetary sanctions. In response to comments received about attorneys authoring expert reports and the filing unsupported expert reports, the PTO states that authority of the PTO to sanction a party for misconduct is robust and the proposed Rule 11-type certification would be applicable against both practitioners and parties. Responding to a comment received regarding fairness, the PTO also touts the Rule 11-type certification as a way to police the actions of counsel, as well as parties, in AIA proceedings.

Claim Construction Standard: The proposed rules would retain the BRI standard and clarify that it applies in all cases except for patents that will expire during the proceedings. The current rules apply the BRI standard to any “unexpired patent” but do not specify a time by which the patent must expire for the PTAB to apply a Phillips construction.

Patent Owner’s Motions to Amend
On this highly debated topic, the PTO does not include any proposed rules changes and instead notes its development of motion-to-amend practice through Board decisions. For example, the PTO cites the MasterImage 3D decision (IPR2015-0040, July 15, 2015, Paper 42) which 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.

Regarding the burden to show patentability, the PTO notes that, “the ultimate burden of persuasion on patent owner’s motion to amend remains best situated with the patent owner, to ensure that there is a clear representation on the record that the proposed substitute claims are patentable, given that there is no opportunity for separate examination of these newly proposed substitute claims in these adjudicatory-style AIA proceedings.”

Additional Discovery and Obviousness
In seeking prior comments, the PTO had asked “Under what circumstances should the Board permit the discovery of evidence of non-obviousness held by the Petitioner, for example, evidence of commercial success for a product of the Petitioner?” After considering comments received, the PTO states that “…it believes the Garmin factors currently provide appropriate and sufficient guidance for how to handle requests for additional discovery, which the PTO will continue to decide on a case-by-case basis.” Accordingly, no rule changes are proposed regarding additional discovery and obviousness. With respect to patent owner requests for additional discovery regarding the petitioner’s product in support of a commercial success non-obviousness argument, the PTO indicates that some showing of nexus is required between the claimed invention and the information being sought through discovery. However, the PTO stops short of requiring a conclusive showing that the challenged claims read on the petitioner’s product, that the product was commercially successful, and that the alleged success resulted from the patented feature.

Real Party In Interest
There are no proposed rule changes on this topic. Instead, the PTO plans to revise the Trial Practice Guide to provide guidance on raising a challenge regarding a real party-in-interest identified by a party and will later provide guidance on issues such as timing of a challenge, providing proof of real party-in-interest, and correction the identification of a real party-in-interest.

On a related issue, the PTO states that the petitioner bears the burden of producing evidence of standing as well as the burden of persuasion on the issue.

Multiple Proceedings
Regarding the coordination of multiple PTO proceedings related to the same patent, such as a reissue, a reexamination and an AIA trial, the PTO notes that the Board will continue to exercise its discretion on a case-by-case basis as to whether a particular proceeding should be stayed, transferred, consolidated or terminated. The Board’s decision in a particular case will be based on optimizing efficiencies and promoting a fair result.

Extension of One Year Period to Issue a Final Determination
The PTO sees no reason to revise the rules to provide for specific circumstances under which “good cause” may be shown by a party to extend the term of the trial beyond one year. The PTO intends to continue striving to meet the one-year statutory time period for trial so as to preserve one of the core advantages of trial before the Board of being speedier at reaching a decision than a district court.

Oral Hearing
In response to comments received on permitting live testimony at oral hearings and changes to the format of oral hearings, the PTO proposes amending 37 CFR § 42.70 to require that demonstrative exhibits be served two days earlier than under the current rules, namely seven business days before oral argument.

The PTO confirms that it is currently planning to upgrade its ability to hold hearings in regional offices. Furthermore, the PTO states that it will strongly encourage panel members assigned to several related cases be present for all the sessions.

General Topics
The PTO proposes amending 37 CFR § 42.24 to implement a word count limitation, instead of page limitations, for petitions, patent owner preliminary responses, patent owner response, and petitioner’s replies. The PTO does not indicate these changes are intended to expand or shorten page limits; however, the change will likely allow parties to insert more figures and flow charts that have little or no effect on word count.

The public comment period for this second set of rule changes ends on October 19, 2015 and the PTO expects to finalize the rules by the end of 2015. A copy of the proposed rules may be found here. The PTO previously announced its first round of “quick fixes” in March of 2015 and expects to shortly publish a third set of proposed rules changes related to staffing of PTAB panels and the institution phase of proceedings.

Brinks Gilson & Lione
The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property, making Brinks one of the largest intellectual property law firms in the U.S. Clients around the world rely on Brinks to help them protect and enforce their intellectual property rights. Brinks attorneys provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law. More information is available at www.brinksgilson.com.

Brinks’ Post-Grant Patent Practice Group Assists Clients with Expedited Review at USPTO

CHICAGO/DETROIT—April 8, 2014 – In response to the sweeping changes to post-grant proceedings brought about by the Leahy-Smith America Invents Act (AIA), intellectual property law firm Brinks Gilson & Lione has established a post-grant patent practice group with deeply experienced patent attorneys who are assisting clients with post-grant reviews.

Brinks’ newest practice group, which numbers 46 attorneys, counsels clients on patent litigation strategies under the provisions of the Act. Brinks also oversees proceedings before the United States Patent and Trademark Office (USPTO) and the Patent Trial and Appeal Board (PTAB).

The AIA, a federal statute that became effective in 2012, establishes new trial procedures and an accelerated timeline for review of the patentability of issued patents at the USPTO. These procedures include post-grant review (PGR), inter partes review (IPR), and a transitional program for reviewing so-called covered business method patents. Brinks attorneys assist with all these proceedings, as well as ex parte reexaminations, derivations and interferences, and supplemental examination.

Shareholders Kelly K. Burris and Marc V. Richards co-chair the new practice group. Burris, who has practiced law for more than 14 years, is also an aeronautical engineer, a pilot, and a U.S. patent holder in the field of fiber optics. Richards, a chemical engineer by degree and a control systems engineer by training, as well as a widely respected authority on patent-related issues, has more than 20 years of legal experience and has published and presented frequently on the subject of patent law. He formerly chaired the firm’s Reexamination and Interference Practice Group, which is now folded into the new practice group.

“The reforms incorporated into AIA collectively represent the most dramatic change to the U.S. patent system in decades. As one of the largest intellectual property law firms in the United States, Brinks is uniquely positioned to advise clients on post-grant proceedings before the USPTO,” said Richards. “Simply put, we’re specialists in prosecuting and litigating patents, and both skill sets are critical to successful post-grant proceedings.”

Added Burris, “Post-grant proceedings are an efficient and effective alternative to district court litigation, requiring a lower burden of proof, offering lower costs, and promising faster results. Brinks’ lawyers can develop strategies for clients based on the new rules for timing and patent eligibility, so they can realize these benefits quickly.” Burris has previously testified before the U.S. Congress with regard to other legislation involving patent protection and heads Brinks’ Detroit office, which is located in the same building as the USPTO’s Detroit Satellite Office.

Brinks recently launched a public web page specifically devoted to post-grant patent practice, to help companies understand the opportunities for challenging or strengthening a patent through a USPTO proceeding, at brinksgilson.com/practice_areas/post-grant-patent-practice-group.

Brinks Gilson & Lione
Brinks Gilson & Lione has 160 attorneys, scientific advisors and patent agents who specialize in intellectual property, making it one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them identify, protect, manage and enforce their intellectual property. Brinks lawyers provide expertise in all aspects of patent, trademark, unfair competition, trade secret and copyright law. The Brinks team includes lawyers with advanced degrees in all fields of technology and science. Based in Chicago, Brinks has offices in Washington, D.C., Research Triangle Park, N.C., Ann Arbor, Detroit, Salt Lake City and Indianapolis. More information is at www.brinksgilson.com.

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