PTAB Proposals on Senate Side

With Congress headed toward a summer recess in a few weeks, it is expected that the pending patent reform bills will be front and center for July. Below is a high level overview of the PTAB proposals currently embodied in the Senate's Patent Act" (S.1137).  As previously pointed out, many of these proposals are expected to be mooted in a matter of weeks by the PTAB's July rule package.  Perhaps PTAB movement will cool the legislative appetite for these proposals, time will tell.

  1. Preliminary Response - IPR

§ 313 is modified to add subsection (b), which enables a preliminary response to include affidavits/declarations of supporting evidence and opinions.  In addition, a petitioner may seek leave to file a response to respond to new issues raised in the preliminary response.

(PTAB expected to propose a similar modification)

  1. Institution Decision - IPR

§ 314 is modified to permit non-institution if it “would not serve the interest of justice.”  Factors considered in making this decision include whether the grounds or arguments are the same or substantially the same as those considered and decided in a prior judicial or PTO proceeding and whether there is another proceeding or matter involving the same patent before the PTO.

(appears to target hedge fund filings, but PTAB is likely to take care of that problem on its own)

§ 314 is also modified to state that an IPR shall not be instituted on the basis that the evidentiary standard at the PTO differs from the one used in a court proceeding to adjudicate the claims in the petition.

(Also appears directed to hedgies/PTAB trolls that seek to re-purpose art of a litigation) 

§ 315 is modified in subsection (b) to bar institution for “a particular claim” if the IPR is filed more than one year after the date that the petitioner, RPI or privy is served with a complaint alleging infringement of that claim.

§ 315 is also modified to allow a petitioner to add additional patent claims to an instituted IPR within 1 year after the date that the petitioner, RPI or privy was served with an amended complaint or other paper alleging infringement of those claims for the first time.

(Both changes address a common driver behind issue joinder practices, namely, amended complaints outside the 12-month window.  This change is worthwhile, and not something the PTAB can fix independently)

  1. Representations Regarding Prosecution History - IPR

§ 315 is modified to bind a party, RPI or privy in a subsequent PTO proceeding or civil action to any representations regarding claim construction with respect to the prosecution history that were finally adopted by office in deciding the IPR.

(Assuming a Philips construction is adopted, B&B Hardware would probably do this anyway)

  1. Live Testimony - IPR

§ 316 is modified to provide a right to live testimony including cross examination of an adverse witness prior to the oral hearing if the panel finds it would “facilitate resolution of the case” because genuine issues of material fact, conflicting expert opinions, or issues of witness credibility exist.

(Language still leaves discretion to the Board.  This, like a similar proposal of the PTAB, seems directed at toning down language indicating live testimony will be rare, likely to avoid due process challenges)

  1. Claim Construction - IPR

§ 316 is modified to require claims be construed as in a civil action, i.e., apply Phillips, including construing according to the ordinary and customary meaning as understood by one of ordinary skill and prosecution history.

(As I have pointed out repeatedly, this is likely to hurt patentees more than help them)

§ 316 is further modified to require the PTO to consider previous constructions and validity determinations by a US court.

  1. Claim Amendments - IPR

§ 316 is modified to require that any proposal of one or more substitute claims:

Be filed in the first paper following institution and within 30 days of institution;

Narrow the scope of cancelled claims and add no new matter; and

Respond to a ground of unpatentability involved in the trial.

(The first requirement is nonsensical, and the second and third already exist.  Likewise, the PTAB is expected to issue new rules that make amendment more manageable in the coming weeks)

§ 316 is also modified to provide the petitioner a “meaningful opportunity” to file a written response addressing the above requirements and whether the substitute claim is unpatentable, which the petitioner must prove by a preponderance of the evidence.

(Not sure if this is poking a stick at the old 5 page requirement or not.  Petitioner now get a 12 page response by PTAB rules.  This is no longer needed.)

  1. Post Grant Review

All of the changes above are also made for PGR except for the rule changes for institution decision relating to the different evidentiary standard at the PTO and court, the barring of institution of “a particular claim,” and the possibility to add claims added by amended complaint.

(Keep in mind that PGR must be filed quickly after issuance, so not all of these controls are needed for PGR)

  1. Panels

Requiring that within one year of enactment, ensuring that the panel adjudicating the proceeding (IPR or PGR) have no more than one individual that participated in the institution decision.

(PTAB has discussed a similar change)

  1. Rule 11

Any statement, petition, or other submission to the PTO is made under an obligation substantially similar to the obligations in Rule 11 of the FRCP.

(Not sure this adds anything, submissions to the agency are already controlled by ethics rules.)