Considerations on the state of PTAB as it enters the era of PGR Stefano John NAIP Education & Training Group / European Patent Attorney
It has now been 2 years since the USPTO Patent Trial and Appeal Board (PTAB) has been deciding on US patent cases in Conventional Business Methods (CBM) and Inter-Partes Review (IPR) cases. Within these 2 years, the PTAB has set some principles in how it works that have been much debated.
The first of these principles is what type of claim construction should be applied by the PTAB. Claim construction is crucial to determining what the scope of the claimed invention is, and therefore also if the prior art affects it or not. Normally, during USPTO prosecution, the US Examiner should adopt the Broadest Reasonable Interpretation (BRI) standard. The PTAB has consistently decided to employ the same BRI standard for claim construction, as opposed to the construction used by District Courts which is frequently cited as the Phillips standard (from Fed. Circuit case Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005)).
The Phillips standard should be used for claims that have the presumption of validity (i.e. when granted). This means it is not possible to interpret an ambiguity in a claim so that it would make the claim invalid. Under the BRI standard, such an ambiguity should be considered within the scope of the claim, even though it would render the claim invalid, because the standard requires simply the broadest reasonable interpretation. The Federal Circuit has always stated that the scope of BRI standard should always be larger or equal to the Phillips standard. This could lead to a situation where the claims are found not to be patentable under PTAB (because the claims are judged under the BRI standard), as opposed to if they were interpreted in District Courts under the Phillips standard.
This can be shown schematically here below:
Why could this cause a problem, when the USPTO Examiners use the same standard anyway? The reason it may cause a problem for patent owners is that IPR gives the opponent a new opportunity to present new prior art – prior art which was not previously available to the patent applicant and therefore has to be taken into account for the first time.
This leads us to the second contentious principle by the PTAB. The PTAB seems reluctant to allow amendments to the claims to allow them to be rendered patentable again. This may be more for logistical reasons than anything else – the PTAB have a statutory obligation to reach a decision within 12 months (possibly 18) from issue of proceedings and allowing amendments may cause problems in achieving this tight deadline. Also, the PTAB under IPR is only allowed to reject patents for patentability (novelty (USC35#102) and obviousness (USC35#103)). As a result, any discussion of added subject matter or any other issue under USC35#112, which any proposed amendment could lead to, would cause the PTAB to go beyond its remit in IPR. In RIM v. MobileMedia Ideas, PR2013-00036, the PTAB determined that it had to sua sponte (by its own volition) terminate the proceeding because it was dealing with USC35#112 as well as USC35#102/103.
The third interesting issue is that the PTAB has shown a statistically significant number of times that it is not willing to accept the application of the BRI standard that was previously employed by USPTO Examiners during a patent’s prosecution history. This was recently seen in Toshiba Corp. v. Intellectual Ventures, IPR2014-00317, where the PTAB disagreed with the Examiner in the reexamination and construed “a memory” to mean “one or more memories”, which meant that the patent was anticipated by the prior art and the PTAB so decided against the applicant in the IPR.
While the above issues may seem reasonable assertions within the strictures of the IPR process, it must be remembered that the same “court” will start applying the same principles to the Post-Grant Review (PGR) for First-Inventor-to-File (FITF) patents as defined in the AIA. Two recent PGR proceedings have been filed against granted US FITF patents. PGR proceedings allow a third party to challenge the validity of a patent on validity grounds than IPR – these include novelty, obviousness, written description, enablement, indefiniteness, utility, and subject matter eligibility.
Given the above issues, it seems clear that PGR will become a very powerful tool to attack US patents, especially when combined with PTAB principles as have been described above. The application of BRI interpretation by PTAB against new prior art cited by third parties and the fact that it could be attacked for many of the grounds cited above means that there is much more probability that PGR could be successful where IPR was less so. The PTAB can examine all these grounds under PGR means that it is more likely to terminate proceedings and continue under BRI until conclusion (as opposed to if USC35#112 ground arose in IPR), making PGR more powerful. Furthermore, the PTAB does not readily allow amendments and the PTAB does not feel bound by the decision by Examiners during earlier prosecution (at least following decisions taken under IPR).
One interesting aspect will be to see how the PTAB will handle amendments presented during PGR proceedings. If they will be as reluctant to allow them as they are under IPR, because of the same 12/18 month statutory time constrictions, then any new prior art could easily become lethal to a patent under an attack on the many grounds possible. For example, it is quite common for a patent claim to be either obvious in front of new prior art or to be not sufficiently enabled to cover the scope claimed, thus either not valid under USC35#103 or USC35#112. Usually amendments allow the patent applicant to escape such a squeeze, but it is not clear if such option is possible under PGR. If PGR is thus seen as the best means to attack patents, then the PTAB is swamped by a high number of cases and this could then impact the statutory time limits which will make allowing amendments less likely. This will increase the attraction of using PGR to attack patents and thus further increase the number of PGR cases, hence leading to a self-perpetuating and self-promoting mechanism within the US patent system.
Author:
Stefano John, European Patent Attorney
Experiences:
European Patent Attorney, Bryers
Trainee European Patent Attorney, Bugnion SpA
Trainee European Patent Attorney, Notabartolo & Gervasi
Internship, EPO