Patent Case Management: Professor Peter Menell (Berkeley) has been working with several top patent litigators to develop a “comprehensive patent case management guide” for federal judges. The almost-final draft is available online. The manuscript will very likely become a desk reference for district court judges and their clerks once it is published by the Federal Judicial Center in the next couple of months. In some ways, the 500+ page manuscript is a patent doctrine encyclopedia as well as a judicial form book.
[UPDATE] Secretary of Commerce: In a prior post, I wrote about the potential John Thompson, CEO of Symantec may be appointed as the next Secretary of Commerce. As noted in the comments, I failed to mention the fact that Symantec is a leading member of the “Coalition for Patent Fairness.” The Coalition is a lobbying group pushing for reduced patent damages awards, reduced ability to forum shop, and an invigorated system for post-grant challenges to asserted patents. [LINK] Previously, the Coalition also supported eBay and reduced willfulness findings. Each of these changes reduce the potential power individual patents.
Query: Assume you have a popular product covered by a pending patent. Is there a way to mark the patent pending good in a way so that an infringer will be considered on notice of the patent as soon as the patent issues (so that you can collect past damages).
Patent Case Management: Professor Peter Menell (Berkeley) has been working with several top patent litigators to develop a “comprehensive patent case management guide” for federal judges. The almost-final draft is available online. The manuscript will very likely become a desk reference for district court judges and their clerks once it is published by the Federal Judicial Center in the next couple of months. In some ways, the 500+ page manuscript is a patent doctrine encyclopedia as well as a judicial form book.
[UPDATE] Secretary of Commerce: In a prior post, I wrote about the potential John Thompson, CEO of Symantec may be appointed as the next Secretary of Commerce. As noted in the comments, I failed to mention the fact that Symantec is a leading member of the “Coalition for Patent Fairness.” The Coalition is a lobbying group pushing for reduced patent damages awards, reduced ability to forum shop, and an invigorated system for post-grant challenges to asserted patents. [LINK] Previously, the Coalition also supported eBay and reduced willfulness findings. Each of these changes reduce the potential power individual patents.
Query: Assume you have a popular product covered by a pending patent. Is there a way to mark the patent pending good in a way so that an infringer will be considered on notice of the patent as soon as the patent issues (so that you can collect past damages).
In 2003, Boston Scientific sued Cordis for infringement of its drug-eluting, non-thrombogenic, expandable stent. (Patent No. 6,120,536). The stent, thus has a metal core surrounded by a drugged layer that is then surrounded by a non-thrombogenic layer. A jury found the asserted claims infringed and not obvious. The district court accepted the jury verdict and denied the Cordis motions for JMOL and a new trial. On appeal, the Federal Circuit reversed – finding the patent obvious as a matter of law.
Cordis pointed to another Medtronic patent (“Wolff”) as prior art that – by itself – renders the claims invalid. Wolff discloses two separate embodiments: (Fig 4) a metallic core with a drug-eluting coating and (Fig 3B) a drug-eluting core with a non-thombogenic coating. Thus, Wolff “teaches all of the [claimed] limitations. . . . The only qualification to this statement of fact is that all of the limitations are found in two separate embodiments pictured side by side in the patent, not in one embodiment.”
Applying KSR, the Federal Circuit found that it would have been obvious to combine the two embodiments since the combination was simply a “predictable variation.”
“Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.”
Holding: The asserted claim “would have been obvious in view of Wolff.”
Note: The Cordis brief used a particularly effective strategy of including the two embodiments to be combined followed by a demonstrative drawing of how they would have been combined. Here, they used the same drawing style and also used the same figure numbering.
This post was written by Professor Josh Wright. Wright is a professor at George Mason University Law School, but is visiting this semester at the University of Texas Law School in Austin. This post was originally published on the blog Truth on the Market.
Asnoted, the FTC has exercised its right under 15 USC 56(a)(3) to petition for a writ of certiorari to review the judgment of the D.C. Circuit in itsFTC v. Rambus. The FTC press release ishere. The petition ishere. The questions presented, as framed by the Commission are:
1. Whether deceptive conduct that significantly contributes to a defendant’s acquisition of monopoly power violates Section 2 of the Sherman Act.
2. Whether deceptive conduct that distorts the competitive process in a market, with the effect of avoiding the imposition of pricing constraints that would otherwise exist because of that process, is anticompetitive under Section 2 of the Sherman Act.
I do not believe the FTC has presented a convincing case for granting cert. Further, I don’t think the Supreme Court should grant cert inRambusfor reasons I’ll discuss in the post. For a more detailed exposition on some of the issues touched upon by this post, see my article with Bruce Kobayashi,Federalism, Substantive Preemption and Limits on Antitrust: An Application to Patent Holdup(forthcoming in theJournal of Competition Law and Economics).
The FTC lists what I count as five separate reasons to grant the petition:
(1) the D.C. Circuit applied an overly restrictive “but-for” causation standard that would require the Commission to show that Rambus’s conduct was anticompetitive (”the court of appeals erred in supposing that a Section 2 tribunal must identify a particular anticompetitive effect in order to find liability”);
(2) the court erred in its application ofNYNEX v. Discon, Inc.toRambusto conclude that the loss of an opportunity for the SSO (JEDEC) to obtain a RAND commitment from Rambus was not an anticompetitive effect under the antitrust laws;
(3) the Supreme Court should grant the petition to clarify “the governing standards of causation in Section 2 cases”;
(4) the D.C. Circuit decision is at odds with the Third Circuit’sBroadcomdecision which held that the loss of a RAND commitment due to deception is a proper basis for Section 2 liability; and
(5) the set “inconsistent set of rules” creates a conflict that “threatens confusion regarding the conduct of participants in industry-wide standard setting,” “will discourage participation in standard setting proceedings,” and “ultimately harm consumers.”
I want to examine some of those issues more closely, sketching out reasons why I do not believe that they warrant cert, and also highlight some issues the FTC did not but should have addressed in its brief to make the case more compelling. All of that below the fold. (more…)
This post was written by Michael A. Carrier. Carrier is a Law Professor at Rutgers University School of Law in Camden.
In December 2008, the Federal Trade Commission (FTC) filed a petition for certiorari in the Rambus case. There are two central issues in the petition. First, what is the standard of causation needed to connect deceptive conduct with the acquisition of monopoly power? And second, do higher prices in standard-setting organizations (SSOs) present competitive harm?
As the D.C. Circuit articulated the facts in In re Rambus, 522 F.3d 456, Rambus developed and licensed computer memory technologies. Between 1991 and 1996, the company participated in the Joint Electron Device Engineering Council (JEDEC), a semiconductor engineering SSO. In 1993 and 1999, respectively, JEDEC approved a synchronous dynamic random access memory (SDRAM) standard and a double data rate (DDR) SDRAM standard that included technologies over which Rambus asserted patent rights. In 1999, Rambus informed DRAM and chipset manufacturers that it held patent rights over technologies included in the standards and that the continued manufacture, use, or sale of the products constituted infringement.
Ex parte Cornea-Hasegan (BPAI 2009)(non-precedential)
I have been following the BPAI’s response in the wake of the Federal Circuit’s series of patentable subject matter cases that culminated with In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc). In Bilski, the full appellate court held that to be patentable, a process claim must either be “tied to a particular machine or apparatus” or transform “a particular article into a different state or thing.” Bilski explicitly focuses only on process (or method) claim, and practitioners have been left to question its impact on other claim forms.
In Cornea-Hasegan, Intel is attempting to obtain a patent on a short-cut method of performing mathematical calculations when the outcome is likely “tiny.” According to the claim, when the mathematical result is likely tiny, then software is used to calculate the result; otherwise, hardware is used to calculate the result. The application claims both “a method” and “a computer readable media including program instructions which when executed by a processor case the processor to perform” the method. The body of both claims are essentially identical, and neither discuss particular machinery beyond “a processor,” “software,” and “floating-point hardware.”
Processor Insufficient: A claim will be considered to cover patentable subject matter if it is tied to a particular machine. Here, however, the BPAI found that requiring “a processor” is not a “particular” machine.
The recitation of a “processor” performing various functions fails to impose any meaningful limits on the claim’s scope. The recitation of a “processor” performing various functions is nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims. The recitation of a processor in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, is insufficient the recitation of a processor does not limit the process steps to any specific machine or apparatus.
Post-Solution Activity: Although the claimed “floating-point hardware” may be a particular machine, the BPAI disregarded that element as “insignificant extra-solution activity … ‘that will not transform an unpatentable principle into a patentable process.'” (Quoting Bilski).
Transforming Data: A claim will be considered to cover patentable subject matter if it transforms a particular article into a different state or thing. However, the transformation of abstract data or abstract data structures will not be sufficient to render the claim patentable. Here, the only arguable transformation is of data that has no direct physical world corollary.
Non-Method Claims: Some of Intel’s claims are directed to a “computer readable media” rather than a method or process. Intel argued that Bilski should not apply to those “manufacture claims” because Bilski‘s sole focus was method claims. Rejecting that argument, the BPAI panel determined that the Section 101 analysis is the same – regardless of whether the subject is a “manufacture” claim or a “process” claim. (Citing AT&T v. Excel (Fed. Cir. 1999)(abrogated by Bilski)). Remember here that the State Street case – which released the business method rush – determined the patentability of a “data processing system.”
Applying Bilski to the “computer readable media” claim, the BPAI found that the claimed invention was unpatentable because it did not require transformation of any article nor was it tied to any particular machine. Although the claim recites a “computer readable media” and “hardware,” those elements were seen as insignificant extra-solution activities.
Limiting the claim to computer readable media does not add any practical limitation to the scope of the claim. Such a field-of-use limitation is insufficient to render an otherwise ineligible claim patent eligible.
Quoting the Supreme Court in Diehr (1981), the BPAI noted that Section 101 eligibility “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.”
Rejection of all claims under Section 101 affirmed.
Notes:
In Ex parte Bo Li, the BPAI reversed the rejection of a claim written in similar Beauregard format. That case could be distinguished by additional links to a machine or apparatus found in Bo Li‘s claims. In particular, Bo Li’s claim “presents a number of software components, such as the claimed logic processing module, configuration file processing module, data organization module, and data display organization module, that are embodied upon a computer readable medium.” [Link]
In Comiskey(Revised opinion 2009), the Federal Circuit issued a remand order to the BPAI to consider whether Comiskey’s claims of a “system for mandatory arbitration” are directed to statutory subject matter under Section 101.
The BPAI opinion here relies on the following statement from the original Comiskey opinion: “the mere use of the machine to collect data necessary for application of the mental process may not make the claim patentable subject matter.” Comiskey (Fed. Cir. 2007). That statement was deleted from the revised Comiskey opinion.
For the first time in history, fewer than 50% of US patents issued in the past year originated from US applicants. [Zura] IBM received 4,000+ patents in 2008.
In 2007, I asked the question: How will the US patent lobbying change when most new patents are held by foreign companies?
Brian Moriarty and Deirdre Sanders (Massachusetts patent litigators) discuss the combination of the Texas Venue problems (TS Tech, VW) and new D.Ma. local patent rules. Their conclusion: “Patent Suits – Massachusetts In, Texas Out.” [LINK]
More Patent Jobs:
Godfrey & Kahn (Milwaukee) needs an “IP Generalist” with “excellent academic credentials” to help with litigation, trademarks, patent prosecution, and transactions. [Link]
Baker & Daniels (Indy) needs a MechE (or mechanically inclined equivalent) associate to handle patent prosecution. [Link]
After a request for en banc rehearing, the original Federal Circuit panel has revised its decision in Comsikey – erasing the “misunderstood” phrases of the original opinion linking Sections 101 (subject matter) and 103 (nonobviousness). The original opinion implicitly held that any portion of an invention that would constitute nonstatutory subject matter would be considered de facto obvious. [Link]
The new opinion finds that Comiskey’s method claims do not present patentable subject matter and remanded the case to the PTO to determine the subject matter eligibility of the system claims. The Federal Circuit refused to consider nonobviousness issues – even though nonobviousness was the sole issue presented in the original appeal. Subject matter eligibility had been raised sua sponte by the panel.
Judges Moore and Newman each dissented from the en banc order. Judge Moore argued that the decision violates the court’s “well established precedent that this court will not consider new grounds of rejecting patent claims on appeal.”
FTC v. Rambus: Duties of a patent holder in standard setting negotiations. (To be discussed in more detail this week.)
Apotex Corp. v. AstraZeneca AB: This case involves a burden of proof. Should an accused product be found non-infringing if the accused demonstrates that it merely practiced the prior art. Non-infringement is proven by a preponderance of the evidence rather than clear and convincing evidence.
MuniAuction v. Thomson Corp.: Challenges the Federal Circuit’s single actor requirement for patent infringement.
Forest Labs. v. Caraco Pharmaceutical: Whether DJ jurisdiction can exist after the patentee has granted an ANDA applicant a covenant not to sue.
Burandt v. Dudas: When is a failure to pay “unavoidable”
Apotex v. Roche: Is there any meat in the reverse doctrine of equivalents.
Energizer v. ITC: How should a court conduct claim construction?
800 Adept, Inc. v. Murex Securities: De novo review of claim construction.
Completed Cases: The Supreme Court has denied certiorari of two pending appeals: BPMC v. California and Rattler Tools v. Bilco. In BPMC, the patentee had challenged the Western state’s defense of sovereign immunity. In Rattler Tools, the appeal challenged a non-precedential claim construction opinion.
Upcoming Case: In a recently filed petition, 800 Adept has asked the Supreme Court to build on its 1995 Markman decision and consider “whether a district judge’s construction of a patent claim is ever entitled to deference upon appellate review, or, instead, are all such claim constructions reviewable only de novo, as the Federal Circuit has, over many dissenting opinions, held?” In this case, the Federal Circuit had reversed the lower court’s claim construction and – as a consequence – also reversed the jury verdict of infringement. [Link]. FTC v. Rambus is the most likely candidate of patent cases in the petition stage. That case involves the activities of a patentee during a standard setting process. In a related case, well respected Federal Judge Sue Robinson held that Rambus could not enforce twelve of its patents against Micron as a penalty for litigation misconduct. [Link]
In two earlier posts, I discussed the BPAI reversal rate (link) and the reopening of prosecution after a reversal (link). In the reversal rate, I also looked at the historic jump in the absolute number of BPAI appeals filed. In FY2008 (ending Sept 30, 2008), the BPAI received over 6,000 ex parte appeals– concluding two consecutive years of over 35% annual growth rate in appeal filings.
Although dramatic, the reported filing increases pale in comparison to those seen in the past four months. The BPAI reports that in the period of Sept-Dec 2008, it received an average of 954 ex parte appeal cases per month. That value is well more than double the monthly average for the same span in 2007.
At this rate, the number of BPAI appeals would easily reach 10,000 in FY2009.
The planned BPAI rule changes may explain at least part of the sudden jump. In a recent presentation, William Smith of Woodcock Washburn stated that the new rules are “onerous and will significantly increase the cost of preparing an Appeal Brief.” [Link]. I have spoken with several patent attorneys who intentionally filed appeal briefs early in order to beat the December 10 deadline. That deadline has now been postponed. If the rules truly are onerous, then we may see a drop in appeals once they become effective.
Panavise Products v. National Products (Fed. Cir. 2009)(nonprecedential)
Panavise and NPI are competitors in the suction-cup market. NPI owns US Patent No. 6,666,420 and has attempted to enforce its patent via litigation against various entities, including Tomtom, Tesla, JVC, Vision Tech, and others.
Although NPI had not directed any communication toward Panavise, the manufacturer still wanted to clear any potential cloud over its products. As such, Panavise sued NPI for a declaratory judgment that the patent was invalid, unenforceable, and not infringed. The California district court, however, dismissed the case – finding no case or controversy.
On appeal, the Federal Circuit reviewed the issue de novo, but easily affirmed. Quoting its own recent decision in Prasco v. Medicis, the court noted that the “controversy must be based on a real and immediate injury or threat of future injury that is caused by the defendants.” (emphasis in original).
Here, NPI indicated that it had not “seen or evaluated” the Panavise product prior to the lawsuit and there was no evidence that the patent in any way “restrained” the activities of Panavise. “Under settled law, Panavise must present factual proof that such threat is real and immediate. Panavise failed to meet this threshold burden.”
The Court was careful to avoid additional bright-line rules (that would be proscribed by MedImmune). Thus, the opinion notes that declaratory judgment jurisdiction could exist – in certain circumstances – even when there is no direct communication between the patentee and a DJ plaintiff.
Panavise Products v. National Products (Fed. Cir. 2009)(nonprecedential)
Panavise and NPI are competitors in the suction-cup market. NPI owns US Patent No. 6,666,420 and has attempted to enforce its patent via litigation against various entities, including Tomtom, Tesla, JVC, Vision Tech, and others.
Although NPI had not directed any communication toward Panavise, the manufacturer still wanted to clear any potential cloud over its products. As such, Panavise sued NPI for a declaratory judgment that the patent was invalid, unenforceable, and not infringed. The California district court, however, dismissed the case – finding no case or controversy.
On appeal, the Federal Circuit reviewed the issue de novo, but easily affirmed. Quoting its own recent decision in Prasco v. Medicis, the court noted that the “controversy must be based on a real and immediate injury or threat of future injury that is caused by the defendants.” (emphasis in original).
Here, NPI indicated that it had not “seen or evaluated” the Panavise product prior to the lawsuit and there was no evidence that the patent in any way “restrained” the activities of Panavise. “Under settled law, Panavise must present factual proof that such threat is real and immediate. Panavise failed to meet this threshold burden.”
The Court was careful to avoid additional bright-line rules (that would be proscribed by MedImmune). Thus, the opinion notes that declaratory judgment jurisdiction could exist – in certain circumstances – even when there is no direct communication between the patentee and a DJ plaintiff.
On January 12, 2009, Jon Dudas will complete four years as Director of the U.S. Patent and Trademark Office. Prior to that, Director Dudas spent two years as the USPTO’s Deputy Director. Under his directorship, the PTO has focused on “Quality” and reducing pendency of applications. Successes including (1) hiring many more examiners and (2) boosting the PTO budget to $ 2 billion. The electronic filing system for patents has turned out to be an excellent system that works well and is reliable.
In an internal USPTO e-mail, Director Dudas has announced that he will leave the USPTO in mid-January.
Vehicle IP v. General Motors Corp. and OnStar (Fed. Cir. 2009)(Nonprecedential)
VIP’s patent covers a vehicle navigation system. After construing the asserted claims, the W.D. Wisc. court granted summary judgment of non-infringement. This appeal focuses on construction of the phrase “a notification region defined by a plurality of notification coordinates.”
The infringing systems use scalars – such as a distance – and the debate is whether those scalars fit the claimed “coordinates” limitation. The majority opinion (Prost & Bryson, JJ) held that the “plain language of the claims precludes the possibility that a coordinate can be a scalar.” According to the claim, the location of the device must “substantially corresponds to a notification coordinate,” and a bare distance does not correlate to a location. The majority also found suggestions in the prosecution history supporting a narrow construction of coordinate.
In dissent, Judge Mayer would not have limited the coordinate to “a longitude latitude pair.”
“In mathematics, there are many types of coordinate systems and the common ground is that they all define a point. For instance, in a curvilinear system, coordinates are defined with a fixed origin point, and a scalar distance offset from that point along a known curve, such as a section of road. A distance offset necessarily has a “partner” to define a point, as offsets are necessarily set off from another known point. A coordinate should not be construed to exclude defining a point by an offset from another point along a known path.”
In Hal Wegner’s words, this decision “demonstrates the different views that can be reached by reasonable minds on claim construction issues which, due to appellate de novo review, creates the opportunities for so much judicial uncertainty.” And, as suggested by dissenting judges in Phillips v. AWH, that en banc decision did little to create predictability in claim construction.
In November 2008, a jury returned a verdict finding that Sony had induced infringement of Agere’s patent by marketing and selling its PlayStation Portable (PSP) game. It is interesting to look at the simplicity of the jury form:
Post-verdict motions are still pending in the Sony case, but an appeal is expected.
In Spine Solutions v. Medtronic (D.Del. 2008), the jury found that the asserted claims were non-obvious and that the patentee was entitled to lost profit damages.
Some of the damages were also awarded based on a “reasonable royalty” of 18%.
Obama‘s original selection for Secretary of Commerce – Bill Richardson – will not pan out. Richardson has decided to withdraw his nomination. Although we rarely see the Secretary of Commerce directly shaping USPTO policy, the Office is still part of the Department of Commerce and the USPTO Director reports directly to the Secretary of Commerce. The greatest impact of the Secretary of Commerce may be on the selection of high-level PTO officials (including the Director).
The Patent Troll Tracker debacle made the ABA Journal’s list of the top ten legal stories of 2008. (The only IP related issue to make the list). [Link]
Patently-O Jobs:
Microsoft (Redmond, WA) needs a patent portfolio manager (at least 5 years exp.) [LINK]
Google (Mountain View, CA) needs an IP litigation counsel (at least 3 years exp.) [LINK]
Amin Hallihan (Chicago) focuses on IP & FDA issues. The firm is looking one or more experienced patent attorneys to join their ranks. [LINK]
Phama Law: Pozen’s migraine drug (Treximet) is special because it combines two types of migraine treatments into one pill: naproxen sodium (Aleve) and sumatriptan (Imitrex). Alphapharm (Mylan) filed an abbreviated new drug application (ANDA) to begin marketing a generic version of the drug – arguing that the patent is invalid. On January 2, Pozen sued Alphapharm for infringement in the Eastern District of Texas. Claim 1 of the asserted patent reads as follows:
1. In a method for treating a migraine patient by administering a 5-HT agonist [Imitrex], the improvement which comprises: concomitantly administering to said patient a long-acting, non-steroidal, anti-inflammatory drug (LA-NSAID) [Aleve] in an amount that, together with said 5-HT agonist, is effective to reduce migraine relapse or produce longer lasting efficacy compared to the administration of said 5-HT agonist in the absence of said LA-NSAID.
Obama‘s original selection for Secretary of Commerce – Bill Richardson – will not pan out. Richardson has decided to withdraw his nomination. Although we rarely see the Secretary of Commerce directly shaping USPTO policy, the Office is still part of the Department of Commerce and the USPTO Director reports directly to the Secretary of Commerce. The greatest impact of the Secretary of Commerce may be on the selection of high-level PTO officials (including the Director).
The Patent Troll Tracker debacle made the ABA Journal’s list of the top ten legal stories of 2008. (The only IP related issue to make the list). [Link]
Patently-O Jobs:
Microsoft (Redmond, WA) needs a patent portfolio manager (at least 5 years exp.) [LINK]
Google (Mountain View, CA) needs an IP litigation counsel (at least 3 years exp.) [LINK]
Amin Hallihan (Chicago) focuses on IP & FDA issues. The firm is looking one or more experienced patent attorneys to join their ranks. [LINK]
Phama Law: Pozen’s migraine drug (Treximet) is special because it combines two types of migraine treatments into one pill: naproxen sodium (Aleve) and sumatriptan (Imitrex). Alphapharm (Mylan) filed an abbreviated new drug application (ANDA) to begin marketing a generic version of the drug – arguing that the patent is invalid. On January 2, Pozen sued Alphapharm for infringement in the Eastern District of Texas. Claim 1 of the asserted patent reads as follows:
1. In a method for treating a migraine patient by administering a 5-HT agonist [Imitrex], the improvement which comprises: concomitantly administering to said patient a long-acting, non-steroidal, anti-inflammatory drug (LA-NSAID) [Aleve] in an amount that, together with said 5-HT agonist, is effective to reduce migraine relapse or produce longer lasting efficacy compared to the administration of said 5-HT agonist in the absence of said LA-NSAID.
In an earlier post, I examined what happens to patent applications after the BPAI reverses an examiner rejection. [LINK] This next post looks at the BPAI reversal rate itself. Here, I define the reversal rate as the percentage of cases where the Examiner rejections are completely reversed (as opposed to partial reversals).
Over the past several years, the BPAI reversal rate has dropped dramatically. From FY1999-FY2005, the reversal rate remained relatively steady between 35% and 40%. Then, in FY2006 we began to see a smaller proportion of reversals. By the first two months of FY2009, the reversal rate had dropped to 20%. Part of the drop is likely attributable to new filtering mechanisms that keep low-quality rejections from reaching the Board. The pre-appeal brief conference program started in 2005 and allows a patent applicant to request an internal review of the examiner’s final rejection at the Tech Center (TC) level before an appeal brief is filed. Even if no pre-appeal brief conference request is made, the examiner’s case for a rejection is usually reviewed at the TC level before the examiner is allowed to file a responsive brief.
In recent years, these filters have operated to weed-out 80% of the cases where an appeal brief or pre-appeal brief conference request had been filed. Prior to implementation of these filters, the majority of appeal briefs led to BPAI decisions. [See Katznelson, Slide 15]
When the low quality rejections are eliminated from consideration, we should expect that the BPAI reversal rate would drop – as it has. The BPAI is no longer seeing many of the easy reversal cases where the examiner made a clear legal error. Rather, today’s cases before the board tend to be more focused on arguable issues involving obviousness, enablement, and patentable subject matter.
The filters only tell part of the story, and the reversal rate masks the fact that – in absolute numbers – the Board is reversing more cases than ever. Over this same period, the number of appeals filed has increased dramatically. And, although the BPAI has increased its throughput, the backlog has grown five-fold since 2005. These pendency pressures give the Board an incentive to make appeals less hospitable – as we saw with the new (not-yet-final) BPAI appeal rules.
Boston Scientific v. Cordis (
This post was written by 
Ex parte Cornea-Hasegan (
forms. 
In two earlier posts, I discussed the BPAI reversal rate (
Although dramatic, the reported filing increases pale in comparison to those seen in the past four months. The BPAI reports that in the period of Sept-Dec 2008, it received an average of 954 ex parte appeal cases per month. That value is well more than double the monthly average for the same span in 2007.
Panavise Products v. National Products (
Panavise Products v. National Products (
Vehicle IP v. General Motors Corp. and OnStar (
