FICPI Meets With USPTO Patent Trial and Appeal Board

FICPI President Julian Crump, CET President Coleen Morrison, Presidents of Honour Danny Huntington and Bastiaan Koster, FICPI US Vice President Robert Katz, CET3 Chair Jerome Collin and CET5 Chair Sharon Crane met with representatives from the United States Patent and Trademark Office (USPTO) on 23 May 2019 to discuss various patent and trademark issues and recent FICPI resolutions. Attending from the USPTO were Andrei Iancu (Under Secretary of Commerce for Intellectual Property and Director of the USPTO), Drew Hirshfeld (Commissioner for Patents), Mark Powell (Deputy Commissioner for International Patent Cooperation), Bob Bahr (Deputy Commissioner for Patent Examination Policy), Charlie Pearson (Director IPLA), Charles Eloshway (Senior Patent Counsel) and Mary Critharis (Senior Patent Counsel). In addition, on the topic of design patents, Brian Hanlon (Director of the Office of Patent Legal Administration), Brandon Rosati (Technology Center 2900 Operations Manager), Karen Kearney (Supervisory Patent Examiner, TC2900), and David Gerk (Patent Attorney) attended. For the trademark discussion, Mary Denison (Commissioner for Trademarks), Sharon Marsh (Deputy Commissioners for Trademarks) and Meryl Hershkowitz (Deputy Commissioner for Trademarks) attended, and for the Patent Trial and Appeal Board (PTAB) discussion, Scott Weidenfeller (Vice Chief Judge) and Jackie Bonilla (Deputy Chief Judge) attended. The general patent discussion as well as the trademark discussion will be reported separately. Motion to Amend Pilot Program With respect to the PTAB discussions, one main issue discussed was the new Motion to Amend (MtA) procedure published in the Federal Register (84 FR 9497) on March 15, 2019, with a pilot program to begin on the same date. MtAs are one way a patent owner can respond to a petitioner's arguments of unpatentability in post-grant trials at the PTAB. Historically, MtAs have been relatively rare in AIA trials, and have been denied in the majority of instances. The PTAB has had ongoing studies to look at these statistics. As of September 30, 2018, patent owners filed a motion to amend in 326 of the 3,599 completed trials (9%), and in 90 of the 670 pending trials (13%). The Board decided a motion to amend requesting to substitute claims in 205 of the 326 completed trials (63%). The Board granted or granted-in-part and denied-in-part a motion to amend in 21 of the 205 trials (10%) and denied a motion to amend in 184 of the 205 trials (90%). As a result, the PTAB has instituted a new pilot procedure in an effort to increase the effectiveness of the MtA procedure. Judge Bonilla explained that the new procedure would only go into effect for PTAB trials instituted March 15, 2019 or thereafter. It is a pilot program subject to modification based on feedback during the one-year term of the pilot program. The MtA pilot program modifies current MtA practice by giving patent owners the option to choose to receive preliminary guidance from the Board on the MtA and/or to file a revised MtA after receiving the petitioner's opposition to the MtA and/or after receiving preliminary guidance from the Board. The preliminary guidance provides an initial discussion about whether there is a reasonable likelihood that the MtA meets statutory and regulatory requirements for an MtA, and an initial discussion about whether the MtA establishes a reasonable likelihood that the petitioner has established that the substitute claims are unpatentable. In accordance with the decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), the Board will not place the burden of persuasion on a patent owner with respect to patentability of substitute claims. Rather, if the MtA proposes a reasonable number of substitute claims and does not enlarge the scope of the original claims or introduce new matter, then the Board proceeds with determining if the substitute claims are patentable by a preponderance of the evidence. There are no changes to the scheduling order unless, and only after the patent owner chooses to file a revised MtA, about 7 months after institution. Judge Bonilla indicated there had been several informal requests to file revised MtAs in cases instituted prior to March 15, 2019. Appendix 1B to the Federal Register Notice includes a modified schedule for the pilot MtA procedure. Judge Bonilla noted that the schedule would only be extended for good cause - not by the parties, but rather if the complexity of the case warranted it. There may be a Trial Practice update to correspond to the pilot procedure. The change presumably will result in an increased likelihood that substitute amended claims will proceed in PTAB trials. However, many patent owners wait for a final decision in a PTAB trial, and then only if they receive adverse judgment, do they decide whether to pursue "amended" claims either in a reissue or continuation application. Claim Interpretation Standard The Judges also indicated the change in the claim interpretation standard for PTAB trials to be the same as that used in district court (i.e., consistent with Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) rather than the broadest reasonable interpretation ("BRI") has not resulted in any significant changes. Under the new standard, the PTAB will now take into consideration any prior claim construction made in a civil action or at the International Trade Commission (ITC). Specifically, the PTAB, like the district courts, will give claims a narrower construction as "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Standard Operating Procedures and Precedential Opinions Also discussed at the meeting were Standard Operating Procedures (SOP) 1 and 2. SOP1 provides guidance on assignment of judges to panels, and in particular, "paneling by technology," "paneling by experience," and "paneling related cases." SOP2 provides that a party can request a precedential opinion panel to decide issues of exceptional importance involving policy or procedure. In the past, Board decisions were not considered precedential unless, on a rare occasion, they were specifically indicated to be precedential, or more frequently, might be indicated as "informative." As such, a party could not rely on a holding in a previous non-precedential opinion in order to support an argument in another PTAB case. The Board has recently been designating more cases as precedential. One important precedential opinion was General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017), which listed seven factors to be considered when deciding whether to accept follow-on IPR petitions, in order to prevent inequities to the patent owner and ensure efficient IPR procedures. The factors delineated were as follows:

1. whether the same petitioner previously filed a petition directed to the same claims of the same patent;
2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it;
3. whether at the time of filing of the second petition the petitioner already received the patent owner's preliminary response to the first petition or received the Board's decision on whether to institute review in the first petition;
4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition;
5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent;
6. the finite resources of the Board; and
7. the requirement under 35 U.S.C. ? 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review.

Oral Arguments Judge Bonilla also stated that the PTAB will hear oral argument on any PTAB trial where it is requested. This appears to be quite a departure from recent interference proceedings, where the Board had largely eliminated oral hearings. FICPI delegations will continue to meet with other national patent offices later in 2019. Attending from FICPI were:

• Julian Crump (FICPI President)
• Coleen Morrison (CET President)
• Danny Huntington (President of Honour)
• Bastiaan Koster (President of Honour)
• Robert S. Katz (FICPI US Vice President)
• Jerome Collin (CET3 Chair)
• Sharon Crane (CET5 Chair)

Attending from the USPTO were:

• Andrei Iancu (Under Secretary of Commerce for Intellectual Property and Director of the USPTO)
• Drew Hirshfeld (Commissioner for Patents)
• Mark Powell (Deputy Commissioner for International Patent Cooperation)
• Bob Bahr (Deputy Commissioner for Patent Examination Policy)
• Charlie Pearson (Director IPLA)
• Charles Eloshway (Senior Patent Counsel)
• Mary Critharis (Senior Patent Counsel).

On the topic of design patents:

• Brian Hanlon (Director of the Office of Patent Legal Administration)
• Brandon Rosati (Technology Center 2900 Operations Manager)
• Karen Kearney (Supervisory Patent Examiner, TC2900)
• David Gerk (Patent Attorney)

For the trademark discussion:

• Mary Denison (Commissioner for Trademarks)
• Sharon Marsh (Deputy Commissioners for Trademarks)
• Meryl Hershkowitz (Deputy Commissioner for Trademarks)

For the PTAB discussion:

• Scott Weidenfeller (Vice Chief Judge)
• Jackie Bonilla (Deputy Chief Judge)

The full agenda is available below.