In remarks today, USPTO Director Iancu has proposed the PTAB’s next step in reforming AIA Trials — giving the patent owner a six-week window following an institution decision to file a motion to amend. See below.
October 25, 2018
As prepared for delivery
This is a new day for the USPTO and our Patent Trial and Appeals Board (PTAB). For we are now increasing balance, consistency and transparency, especially in post grant proceedings. And in doing so, we are increasing confidence in these important proceedings.
Since Congress passed the America Invents Act (AIA) in 2011, we have received more than 9,000 petitions and issued over 2,000 final written decisions. So, we now have broad experience in understanding the true benefits and true challenges of these proceedings.
Opinions on how post-grant proceedings have been conducted to date diverge widely. Some vigorously dislike them, arguing that they are unfair and tilt too much in favor of the petitioner. Indeed, some would like to see the system abolished entirely. Others love the system, believing it’s the best tool we have to correct errors, eliminate “bad patents,” and improve patent quality. In fact, some would like to see IPRs expanded to consider even more issues.
As the agency in charge of administering these proceedings, it is our duty to carefully weigh all these points of view, and everything in-between, and to bring balance to the current process. It is our duty to look at validity challenges holistically, and determine the overall best approach for the patent system as a whole.
The USPTO has carefully studied the past 6 years of these proceedings; we have discussed the issues with our stakeholders, including many of you in this room today; and we have listened to all who spoke up. And so now, in order to ensure balance, consistency and transparency, in order to increase confidence in the proceedings, and in order to make the patent system as a whole more effective, more efficient and more reliable, we took action.
To that end, we updated the Trial Practice Guide this past August, published two new Standard Operating Procedures for PTAB in September, and published a final rule on the claim construction standard in October. And in just a few days, we will formally publish a proposal for an updated claim amendment procedure in AIA trials.
All of which is what I mean when I say: It is a new day at the PTAB!
To start, our recent update to the Trial Practice Guide was the first since it was published in 2012. In the update, we outlined some non-exclusive factors regarding the institution decision, including considerations regarding follow-on petitions, the overall effect on the economy, the integrity of the patent system, and the like; added sur-replies for the patent owner; provided new guidance on the proper use of expert testimony, and procedures for oral hearings before the Board; and established a pre-hearing conference, which could help focus disputes and expedite resolution of issues.
Second, in an effort to further improve Board practices and transparency, we issued two revised Standard Operating Procedures, or SOPs.
The first SOP outlines the procedures the Board uses for assigning (or re-assigning) judges to cases. This SOP also clarifies that the PTAB will expand panels only in very limited circumstances, generally where consistency among multiple related cases is needed. And even then, the expansion must be done with the approval of the Director and advance notice to the parties.
The second SOP creates a Precedential Opinion Panel and governs precedential and informative decisions of the Board. This panel will mostly be convened to decide issues of exceptional importance that will set forth binding agency policy. Members of this panel are by default the USPTO Director, the Commissioner for Patents, and the Chief Judge, although in some circumstances this authority can be delegated to a pre-defined list of individuals for a particular case.
This panel will enable top agency management to address some of the thorniest issues that come to us, and to instill consistency throughout the agency. This will help ensure that the different groups within the agency speak, where appropriate, with one voice. We are, after all, one agency.
This SOP also outlines the requirements for designating, or de-designating, a decision as precedential or informative – to address concerns about consistent guidance for practice before the PTAB. This new designation procedure should help increase the number of precedential opinions issued by the PTAB.
To date, we have averaged only a handful of precedential opinions every year, an amount that seems far too low for the volume and importance of the cases we see. By comparison, the TTAB, on the trademarks side, designates significantly more precedential opinions, despite a much smaller docket. I am not suggesting that the PTAB should necessarily designate as many precedential decisions as the TTAB, but, to increase consistency at the PTAB, something more than the current mere handful seems in order. The designation process outlined in the new SOP should help in that regard.
Combined, these two SOPs increase transparency, promote consistency, and—I believe—will increase confidence in the process.
Third, on October 11, we published the final rule for claim construction in AIA proceedings before the PTAB. The same standard will now be applied in AIA Trials before the Board as in civil actions in district courts, and in proceedings at the International Trade Commission (ITC). Furthermore, any prior claim construction decision in a civil action or before the ITC will be considered by the Board, as long as it is introduced into the record on a timely basis. The new claim construction standard will apply to all petitions filed on or after November 13, 2018.
Looking at the patent system holistically, this is a critically important rule change.
For the sake of predictability and reliability, the boundaries of a patent should not depend on which forum happens to analyze it. People who want to invest in a patented technology, or who want to invent or design around one, should be able to determine, within reason, what that patent means. Objectively speaking, that meaning cannot, and should not, depend on the happenstance on which forum might review the patent, years after issuance. The rule change, therefore, increases the predictability of our patent system.
Likewise, using the same claim construction standard should improve efficiencies for everyone involved. Parties can develop a single set of claim construction arguments and can leverage the work already done in district court proceedings, or vice versa. Plus, one forum can consider the work previously done by another forum. The rule will therefore also improve consistency between proceedings.
After all, some 85 percent of patents contested at the PTAB are involved in parallel litigation. It seems self-evident that the same patent contested in different tribunals should have its meaning – its boundaries – determined using the same standard.
Now, as it turns out, the change from the Broadest Reasonable Interpretation to the Phillips construction has generated significant interest among our stakeholders. We have received about 375 public comments, and the rule change has been met with widespread support from industry, academics, individuals, and trade organizations, including the AIPLA.
A few, however, are not pleased with the change. Some of these groups have suggested that this change makes it easier to preserve what they call “low-quality patents.”
That’s curious, because all we did was to say that we will use the same standard currently used by district courts and the ITC, and that has been used in countless court proceedings for many years to date. Arguments that using the very same standard already used in federal courts preserves “low-quality patents” are, therefore, unconvincing. In other words, whatever a “low-quality” patent means, it cannot be that it is a patent that survives challenge based on a claim construction standard used in district court.
Put another way still: There is no reason for the USPTO to be using a claim construction standard in IPR that eliminates patents that would otherwise survive challenge in District Courts. Doing so is an example of what I have referred to as an over-correction that risks throwing out the baby with the bathwater.
Our filters need to be appropriately set. Aligning AIA proceedings at the PTAB with the district courts and the ITC brings balance, predictability and consistency to the patent system as a whole.
Finally, in the next few days, we will formally publish a notice seeking comments on a new claim amendment process for post grant proceedings.
I believe that the current amendment process in AIA proceedings is not working as intended. As noted just last year by the Federal Circuit in its lead Aqua Products decision: “Despite repeated recognition of the importance of the patent owner’s right to amend during IPR proceedings—by Congress, courts, and the PTO alike—patent owners largely have been prevented from amending claims in the context of IPRs.”
Indeed, claim amendments have been relatively rare – filed in less than 10 percent of AIA trials – and infrequently granted. Of the already small number of cases where the Board decided a motion to amend, the Board granted or granted in part only 10 percent of such motions. Some have suggested that parties have simply stopped even trying to amend the claims because they see the effort as largely futile.
But the AIA statute specifically provides for claim amendments in IPRs, so in order to fully implement the intent of the AIA, we must find a way to make this amendment process feasible and meaningful. In other words, it is important to ensure that post grant proceedings are not all-or-nothing. It is not in the interest of the patent system as a whole to invalidate a patent entirely if it actually describes patentable subject matter, and appropriately-scoped claims can be drafted.
Therefore, the amendment process should allow the patent owner a meaningful opportunity to draft narrower claims. And in order for the opportunity to amend to be truly meaningful, the patent owner needs input from the petitioner and the Board, so that appropriately-scoped claims can be drafted in light of the prior art and arguments presented.
The AIA statute itself requires a number of things with respect to claim amendments. For example: First, 35 U.S.C 316(d) requires that patent owners must have an opportunity to amend their claims during the proceeding itself. In fact, 35 U.S.C 318(a) requires the final written decision to address both the original and the amended claims. Thus, amendments must be available within the AIA trial itself.
Second, 35 U.S.C. 316(a)(11) states that AIA trials generally should conclude within 12 months from institution. Therefore, the amendment procedures should generally fit within the allotted 12 month window. Third, these are inter partes proceedings. Thus, the Petitioner must have a meaningful opportunity to participate.
And so, based on extensive analysis and consultation with a wide variety of stakeholders, we have developed a detailed solution that meets all of these requirements.
To achieve these goals, we propose a new amendment process that would involve a motion filed by the patent owner soon after institution, an opposition by the petitioner, a preliminary non-binding decision by the Board, and the opportunity for the patent owner to revise the amended claims in light of this preliminary decision.
Specifically: the patent owner will have a window of six weeks following an institution decision to file a motion to amend, if they so desire. The petitioner will then have six weeks to oppose.
After receiving both parties’ papers, one month after the opposition is due the Board will provide a preliminary non-binding decision on the proposed amended claims, similar in concept to the institution decision for the original claims. This preliminary decision would provide valuable insight to both parties regarding the merits of the motion to amend.
Then, the patent owner will have one further opportunity to revise the amended claims, and the petitioner will have a corresponding opportunity to oppose the revision. In the end, the Board will consider both the original claims and any amended claims at the hearing and in the final written decision.
Having the Board provide this extra feedback to the parties earlier in the case should lead to more narrowly-tailored and focused claim amendments, and potential earlier resolution of the issues. As I said, we will seek public comments before finalizing the new procedure. We want to ensure that the final amendment procedure takes into account all of your views.
And so, with the newly updated trial practice guide, the new standard operating procedures, the claim construction standard newly aligned with federal courts, and a robust new amendment process, it is indeed a new day at the PTAB!
I firmly believe that this combination brings more balance to the proceedings, and better aligns them with the original intent of the AIA legislation. . . .
Greg D: The one point that it made poorly—but with which I nevertheless agree—is that the current setup by which a single petitioner is allowed to make multiple (possibly infinite) runs against a single patent really is unfair.
Except that there’s no limit on the number of junky patent claims that one can apply for.
But there should be. I’ve advocated for such a limit for years. It’s absurd that there isn’t a limit. It opens the PTO door to all kinds of abuse by well-heeled toxic types of the sort that enjoy using their wealth to stick their finger in the government’s eye “just because.”
“Except that there’s no limit on the number of junky patent claims that one can apply for.”
How is that even remotely on point?
Oh wait, you want to ignore any difference between claims submitted and claims allowed….
“But there should be. I’ve advocated for such a limit for years. It’s absurd that there isn’t a limit.”
LOL – your cognitive dissonance on full display. Maybe you should go back to your “encyclopedic” collections and review the Tafas case and why a position such as yours was itself “toxic” and rightfully rejected.
The following paragraph is also in error:
“The AIA statute itself requires a number of things with respect to claim amendments. For example: First, 35 U.S.C 316(d) requires that patent owners must have an opportunity to amend their claims during the proceeding itself. In fact, 35 U.S.C 318(a) requires the final written decision to address both the original and the amended claims. Thus, amendments must be available within the AIA trial itself.”
This reading appears to make amendments something of a right to have.
But that decidedly is not how the AIA was written.
Instead, the only right is the right to ASK for an amendment.
There is no right to obtain what one asks for.
The Office may provide a “generous” attitude towards allowing amendments, JUST AS the Office may decide to have a parsimonious attitude.
But either way, the discretionary power — as provided by the AIA — is with the Office and is neither with the petitioner nor with the patentee.
I think the goal should be to make patent judges ALJs.
We are never going to get rid of IPRs so the goal should be to morph it into something like a DC proceeding.
“the goal should be to make patent judges ALJs.”
You’ve said that before.
What you have not said, was how merely doing that gets your over the hump to where you want to be vis a vis the express desire of Congress to have a split forum set-up with the first set-up being in a non-Article III forum (with the concomitant lack of having to satisfy Article III standing), as well as the express limitation to NOT cover 35 USC 112 attacks.
It is still a split forum if they are ALJs.
What I think anon—which is what I said like 10-15 years ago too–is that the SCOTUS doesn’t want these cases in the DC, which IMHO is the reason Oil States was decided the way it was.
35 USC 112 attacks. Not sure why that matters.
The 112 was a vestige from a previous thread.
Does making the PTAB judges into ALJs really do anything if you are going to leave the hot mess as being a dual-fora monstrosity? I had thought that the thrust of making them ALJs was to invoke Article III standing.
ALJ makes them independent from the USPTO.
I think we are stuck with the dual forum. I don’t like it, but I think the more independent the judges, the more it will be like DC.
I am merely suggesting ways to make it a more fair forum for patent owners.
In vain do I ask this question, but here goes again: what is the evidence that the PTAB is any less fair to patent owners than are district courts? Incidences where the two fora arrive at different conclusions are vanishingly rare. The rates of invalidation in each forum are about the same. What is the tangible evidence that one of these two fora is systematically less fairn—to any party—than the is the other?
in vain…?
Rather not, as the last time you asked, you were directed to a series of articles (on another blog) providing a long documented list of transgressions.
Greg,
Yes there other patent blog ahs lots of articles. I think DCs are about 50% and the PTAB is about 85% invalidation.
Plus, Greg, a lot of the fairness is procedural. Saying that the patent owner and the petitioner should have more procedures available to them.
I think this is civil procedure 101.
When I look at the numbers that get tossed around over on Watchdog, what I see is a lot of “if you compare these jumbo oranges to these other puny apples, you can see that the outcome is fair.” When I point out that one is comparing apples to orange, and ask for a clear, apples-to-apples comparison, I get invective, not data. The data show ~45% claim invalidation rate in both district court and PTAB (the rate is actually a few percentage points higher in court).
I would be interested to see you point to an apples-to-apples comparison with data showing your 50% vs. 85% assertion.
I think the studies of the invalidation rate for claims at the PTAB is readily available.
Plus you didn’t respond to my point about procedural fairness.
I think the studies of the invalidation rate for claims at the PTAB is readily available.
You are definitely correct. Such data are available, and they show that courts invalidate ~43% of challenged claims, while the PTAB invalidates ~39% or ~42%, depending on how you want to count.
In other words, basically the same outcomes. So, where is the evidence for unfairness.
Plus you didn’t respond to my point about procedural fairness.
What point? What—specifically—do you have in mind when you talk about “procedural” unfairness?
link to ipwatchdog.com
There is one that talks about fairness. Plus the real articles on invalidation rate say it is like 85%. You are citing the ones that play with the numbers.
Additionally, –again–I am having trouble with you in that you are just scoffing at basic legal principles. The argument for fairness is that the patent owner does not have a fair process. They do not procedural have the opportunity to contest the arguments for invalidation.
Again–just like you not understanding Constitutional law you seem not to understand Civil Procedure.
Plus you talk about apples and oranges and yet you are using a gross metric of invalidation rate and not–like I have–using basic principles of Civil Procedure.
There are a lot of other things wrong with what you are saying. Basically, you are just adopting the large corporation PR machine’s position. Really disappointing that a person of your education would not care more to cut through all the nonsense.
You two are talking past each other on IPR statistics. Greg’s number is [logically] counting the substantial, and increasing, number of PTAB denials of IPR petitions as patent owner victories, and Night Writer is only counting those IPR petitions that were granted and rejected at least one [not all] claims. Also, D.C. invalidity decisions vary somewhat depending on counting Fed. Cir. reversals [both ways] of those D.C. decisions.
[T]he real articles on invalidation rate say it is like 85%. You are citing the ones that play with the numbers.
One notes that you rather unhelpfully (or is it conveniently?) do not trouble to cite any of these “real” numbers. You merely assert what they supposedly show. Ipse dixit is a fallacy, not an argument.
As Paul notes, the sources that arrive at numbers in the vicinity of 85% do so by comparing apples to oranges. One looks at the invalidation rate from all court decisions, and compare that to the subset of PTAB cases that go all the way to a final written decision.
This is such a transparently bogus comparison that one is left with the unavoidable conclusion that the folks advancing this argument for “unfairness” really do not care about truth. They just have a propaganda line to advance, and accuracy & truth be hanged.
There is one that talks about fairness.
I read the linked article. It was mostly the same apples-to-oranges analysis that I expect at that blog. The one point that it made poorly—but with which I nevertheless agree—is that the current setup by which a single petitioner is allowed to make multiple (possibly infinite) runs against a single patent really is unfair. To whatever extent that is what you mean by “procedural” unfairness, I agree with you.
If a reform bill were to be advanced limiting each IPR petitioner to one petition per patent, I would cheerfully support that bill. This would make scant real world difference, because very few patents see more than one IPR petition, but that would nevertheless be a more intuitively fair rule by which to run the IPR system.
This would make scant real world difference, because very few patents see more than one IPR petition…
I just noticed that my hyperlink to the data did not appear in my earlier post. I must have typed my HTML commands wrongly. Data here. As you can see, the overwhelming majority of patents never see more than one IPR petition, and among those that do, many come from more than one petitioner, so a more emphatic estoppel rule would not prevent much of that (rather rare) phenomenon of multiple petitions.
link to ipwatchdog.com
Trying to include petitions that were not instituted doesn’t really make sense as they can file another petition and because it is discretionary on the part of the director to initiate or not. So throwing these into the mix is misleading at best.
And, Greg, seriously? Misrepresenting the numbers? Nothing could be further from the truth. The efforts to accurately represent what is happening is coming from the pro-patent people.
You need to dig deeper Greg. You don’t understand patent law or the dynamics of what is going on.
And–just as a reality check, Greg–you know reality something that you need to spend more time figuring out and not reading propaganda–reality—reality–the value of a patent has dropped 80 percent since the AIA was passed.
That shows one that the PTAB is not equivalent to the DC as you claim. Try reality.
I will posit that Greg MAY be trying to obtain a “neutral” viewpoint in that he wants to throw out anything that smacks of being “pro-patent.”
Trying to include petitions that were not instituted doesn’t really make sense as they can file another petition and because it is discretionary on the part of the director to initiate or not. So throwing these into the mix is misleading at best.
So let me get this straight. If—instead of denying institution— the PTAB were to grant institution on every petition, and then turn around one year later and announce exactly the same decision that they would have announced in the non-institution decision (but after making the patentee to spend time and money in the trial), then in that world the PTAB would achieve the same degree of “fair” outcome as the courts? But in a world in which we spare the patentee the time and money costs of defending an IPR, the PTAB is less fair than the courts? Despite the fact that the outcome experienced by the parties in that hypothetical universe is exactly the same as the one experienced presently in this universe? Honestly, you cannot be serious.
The efforts to accurately represent what is happening is coming from the pro-patent people.
If you mean that the folks pushing this line of propaganda like to style themselves a “pro-patent,” I am sure that you are correct. What of it? Pres. Trump calls himself a “patriot.” Anyone can say anything that s/he wants. Saying does not make it so.
[R]eality–the value of a patent has dropped 80 percent since the AIA was passed.
That shows one that the PTAB is not equivalent to the DC as you claim.
I do not see what the one has to do with the other. Without conceding the accuracy of your 80% figure (where are the data?), even if this is true, I would be hard pressed to ascribe causality to the AIA in particular. There have been many other changes to the patent system occurring at the same time.
The outcome would clearly not be the same (if for only estoppel).
Incidentally, did you notice that the numbers in the piece that you linked show that 51% of IPR petitions result in not a single claim being canceled? In other words, you are proving my point, but you do not even notice it because you are following the propaganda & spin instead of the substance of the facts & data on offer. Something about reality might bear mention here…
So what numbers are you counting towards 51%?
Reality is that patent value is 20% what it was before the AIA.
Reality is that I put up the real numbers and you are trying to spin your way out of it.
Again–you don’t address the procedural problems.
[W]hat numbers are you counting towards 51%?
Look at that very first infographic in the linked article. It shows that 17% of petitions filed between Sept 2012 and June 2017 were denied institution, 6% were procedurally dismissed before institution, 13% were settled and dismissed before institution without claims being affected, 1% were procedurally dismissed after institution without claims being affected, 10% were settled after institution without claims being affected, and 4% made it to final written decision with all challenged claims sustained.
17+6+13+1+10+4=51% of IPR petitions ending with no challenged claims affected
[P]atent value is 20% what it was before the AIA.
Citation with detailed methodology about how this figure is calculated or it never happened.
Again–you don’t address the procedural problems.
On 27 Oct at 12:35 pm I addressed the only procedural problem that you have (at least kind of) specifically enumerated. I really cannot be expected to address points that you do not articulate in enough detail to make a response possible.
This is too vague to bear a response. You need to be more specific about what procedures you believe to be lacking if you will expect me to respond.
You are lumping in:
6% were procedurally dismissed before institution
13% were settled and dismissed before institution without claims being affected,
1% were procedurally dismissed after institution without claims being affected
10% were settled after institution without claims being affected, and
4% made it to final written decision with all challenged claims sustained.
That last 4% is the headliner. You are including procedural dismals and settlements? That is really ridiculous.
I am pretty sure the numbers from DC don’t include where your complaint is dismissed because you didn’t file it correctly. I don’t think the numbers even include where you file the complaint, but it goes no further and an agreement is reached. Etc.
Procedurally there is little to no discovery. Etc. Lots of differences.
The headline is that if your petition is instituted then the odds of some of your claims being invalidated is much higher than in a DC.
You are adding in all sorts of stuff that does not have a comparison in the DC numbers.
Plus, you are playing games, Greg. Anyone can figure out the procedural differences. Just search for it on ipwatchdog.
Plus, again–the big picture is that patents have lost 80 percent of their value since the passage of the AIA. You keep skipping this when it is the best evidence that the PTAB is harsher than the DC.
Procedurally there is little to no discovery.
Yes, there is less discovery available in an IPR than in a court case. That said, one can only take discovery on legally relevant evidence, and there is so much less at stake in an IPR than in a court, that it is only logical that the scope of relevant evidence should also be less. The PTAB hearing an IPR cannot adjudicate infringement, nor §112 compliance, nor damages, nor shop rights, nor any theory of invalidity under §§102/103 that looks to prior art other than printed publications and prior filed patents.
What sort of relevant evidence is the patentee likely to discover from the IPR petitioner? The only thing that the PTAB can adjudicate is anticipation and obviousness over public documents. In other words,mint is not “unfair” that there is less discovery in an IPR than in court. There are simply fewer legal questions at stake in front of the PTAB than in front of an Art. III judge, so there is correspondingly less that can qualify as “relevant” to the proceeding.
In fact the party most prejudiced by the lack of discovery is the petitioner. The patentee is much more likely to be in possession of evidence of invalidity than is the petitioner to be in possession of evidence of validity. If, however, the petitioner (who chose to file the petitioner fully aware of this lack of discovery) is willing to live without that discovery, it seems strange to bemoan the “unfairness” of such a lack of discovery to the same party who voluntarily chose to do without it.
[I]f your petition is instituted then the odds of some of your claims being invalidated is much higher than in a DC.
In order to be in the place where a petition has been instituted, one must first have satisfied the PTAB that a challenged claim is more likely than not to be invalid. It is hardly remarkable (much less “unfair”) that among the class of claims that appear at the petition stage to be more likely than not to be invalid, a disproportionate share turn out not to be valid at the final decision stage. That is why it is intellectually dishonest to compare district court proceedings to PTAB proceedings without taking account of the petitions denied alongside the ones instituted.
Greg, what is intellectually dishonest is the games you are playing.
You simply ignore what doesn’t fit your narrative.
You added in all these cases that included —settlements–as wins for a patent owner which is ridiculous. Almost half. You added in procedural dismissals–ridiculous. You do not address the fall of patent value. Ridiculous. You misstate the institution statute.
Etc. Etc. Etc.
Your entire post is disingenuous. And I am tired of you twisting things and not addressing substance.
The reality is Greg you are like the definition of intellectually dishonest. You have no desire to have real debate. You simply ignore what you don’t like and fabricate nonsense and then accuse others of being deceptive.
You are just like all the other anti-patent judicial activists. Dishonest to the core.
And see above for plenty of examples. And you Greg are the offensive one. You act as if you can just blow over substantive responses and refocus on your next set of misrepresentations as if I won’t notice. There is not a shred of integrity to your posts.
You simply ignore what you don’t like and fabricate nonsense and then accuse others of being deceptive. You are… [d]ishonest to the core. And see above for plenty of examples.
Naturally, I agree entirely that the record above speaks for itself. The dispassionate reader can easily determine—by reviewing the exchange—who is and is not acting in intellectual good faith, and who is and is not approaching the subject with logical rigor. We will have to agree to disagree about the conclusions that this dispassionate reader would draw from such a review.
“and there is so much less at stake in an IPR than in a court,”
exsqueeze me…?
80 percent of their value since the passage of the AIA. You keep skipping this when it is the best evidence that the PTAB is harsher than the DC.
Begging your pardon, but I have most definitely not ignored this point, as anyone who cares to read the above thread can easily see for him or herself. Look at the last paragraph of my 7.1.1.1.1.2.2 and the last paragraph of my 29 Oct at 6:05 pm post.
NW: you Greg are the offensive one
I disagree with Greg vehemently about a few things but he’s not being offensive here. He’s being incredibly generous to you.
At least five times Iancu mentions “balance” in IPR proceedings. Apparently he’s forgotten that the entire point of IPR proceedings is to provide the “balance” that is missing from a system where a clueless incompetent PTO spent years granting the most ridiculous junk in the world (and continues to do so). Those junk patents are then weaponized by trolls who threaten and drag whoever they think will pay them into some banana republic in Texas. The accused is immediately forced to spend money, regardless of how incredibly junky the patent is, and is threatened with the possibility of paying hundreds of thousands or millions more dollars.
IPRs were intended to “balance” that situation. Iancu is going to go down in history as the biggest ly ing sack of shirt in the history of the patent office. Just another day of work for a typical Re p u k k ke, of course.
Except when the only objective study of your imaginary “trolls” from the OMB said there was no troll problem.
But keep up the corporate PR.
“But keep up the corporate PR.”
His anti-patent whines do align with corporate PR. As does the dichotomy of him being MOST against the single form of innovation most accessible by the NON-wealthy.
Rather ironic that the ONLY patents that may even appear to be deigned to be worthy by Malcolm (bio molecules, IIRC), are the types of innovation that presuppose a very large established wealth base, and yet he inserts his non-patent law diatribes all the time against “the wealthy.”
the only objective study of your imaginary “trolls” from the OMB said there was no troll problem.
There was a troll problem, and there still is a troll problem.
Intellectr0ll Ventur ds is still a thing, after all.
“Balance” was indeed used exactly five times.
Three times though, that term was used merely as a portion in a larger “set phrase” of “balance, consistency and transparency” indicating a larger hortatory meaning.
Once, the term was used in reference to widely diverging opinions as to how post-grant proceedings have been conducted.
Once, the term was used in reference to alignment with federal courts (indicating that this alignment hews to the AIA intent of an alternative to the courts).
If your grousing here Malcolm is based solely on the fact that people have sought redress from the ham-fisted early-on treatment of a property right (be that a Public Franchise property right or a Private Personal property right), then your feelings are (yet again) getting in the way of how the legal system works (and points as usual to your own hypocrisy, given as you are the single biggest whining crybaby on these boards).
The larger context of the use of the word – the three times within the phrase “balance, consistency, and transparency” shows a very different “spin” than the one that you want to paint.
You descend (and descend quickly) into misaimed ad hominem. Is there something about “balance, consistency and transparency” that bothers you? I mean, besides the obvious notion that patentees may be being treated better?
..
Be that as it may, I do find error in what Iancu states — at least in part.
At one point he states “Put another way still: There is no reason for the USPTO to be using a claim construction standard in IPR that eliminates patents that would otherwise survive challenge in District Courts. Doing so is an example of what I have referred to as an over-correction that risks throwing out the baby with the bathwater.”
This is a plain and obvious error.
The fact of the matter remains: at the institution decision point, sticks in the bundle of property rights ARE removed (taken, to use the precise legal term).
At the institution decision point, what was formerly the full bundle of property rights no longer has that full bundle.
An item no longer there has a direct and immediate bearing on exactly why Iancu is NOT correct in the statement I provided. That item is the presence — and level — of the otherwise statutory mandated Presumption of Validity.
This alone dictates that there IS reason for the USPTO to MAY use a claim construction standard while in the non-Article III forum that MAY yield a different result while in the Office than a result in a different forum.
So why the error? Why this particular error?
Maybe this is an attempt to NOT have a critical eye on a takings challenge. After all, this IS a takings that may well be a unrecoverable Constitutional infirmity (indicating IPRs to be unconstitutional, not in application, but in structure).
IF the Office states that it will not be “using” the taking that occurs, (perhaps the thought is), THEN maybe no one will make a to-do about this structural defect.
The problem with that line of thought of course is that there very much is a difference between unconstitutionality in an “as applied” state versus in a structural state, with the mere presence (even if NOT “used”) of the structural defect making the law unconstitutional.
You can’t seem to see the difference between “balance” (i.e., fairness) with respect to an IPR proceeding, and “balance” within the overall patent scheme. Iancu was speaking to the former.
Just because the PTO issued a lot of junk patents does not mean that there should be an unbalanced follow-on proceeding for all patentees. Someone with a meritorious patent should not be asked to bear the cost of correcting past PTO mistakes (bearing the cost by being subjected to a proceeding where the rules have all been shaped to disadvantage the patentee as opposed to being shaped to reach just and fair outcomes). The balance Iancu refers to will enable IPRs to better sort the good from the bad.
HOPB,
Malcolm really does NOT care for that.
(I think that you may have forgotten that)
Just because the PTO issued a lot of junk patents does not mean that… all patentees… should… be[] subjected to a proceeding where the rules have all been shaped to disadvantage the patentee as opposed to being shaped to reach just and fair outcomes.
Well, yes, I think that we can all agree that it would be wrong to subject all patentees (or any patentees, really) to a process that is not shaped to reach a fair outcome. I have seen scant evidence that IPR processes are shaped to reach something other than a fair outcome. I will cheerfully agree, however, that IPR processes should not be shaped to achieve anything other than a fair outcome.
In any event, relaxing the standard for amendments should be an improvement.
In other words, whatever a “low-quality” patent means, it cannot be that it is a patent that survives challenge based on a claim construction standard used in district court.
Exactly right.
Honestly, anyone complaining that Philips makes it harder to invalidate “bad” patents in the PTAB is not thinking this through completely. The people who should be objecting to Philips are patentees with a business model that relies on multiple litigations. The newly enhanced risk of issue preclusion (a la B&B Hardware) in view of the identity of claim construction standards between PTAB and court should send shivers through those patentees. IPR petitioners have no materially better or worse odds of success before or after this claim construction standard change.
IPR experts have said that the main reason so few claim amendments are made in IPRs is actually the unwillingness of patent owners or their counsel to make a timely decision to realistically face the need to do that in view of the cited art [and to make a potential intervening rights sacrifice].
Nevertheless, this is a very desirable [and long suggested] proposed rule or procedural clarification. That is, specifying how long after the patent owner has received and reviewed the prior art in the IPR petition can proposed claim amendments [substitutions] be presented. [So as not to require re-tying the IPR with new claims or otherwise delaying the IPR time deadline.]
I agree. The proposed rule change regarding amendments looks like a step in the right direction. My only objection is the two-phase process outlined above (first the patentee proposes amendments, then the petitioner objects, then the patentee gets another round of revisions, then the petitioner gets to voice more objections). The multiple back-and-forths add too much delay to a process that is intended to be quick.
I would not, however, wish to make the perfect into the enemy of the good. This proposed process is an improvement over the status quo, so I welcome it.
Greg, one possible fix for that two rounds and two bites at the apple problem could be to require any second round of proposed claim amendments to justify why they were not presented the first time around, at least as contingent alternative claim amendments?
Of course, as noted re comment 4, this is assuming that a lot more patent owners will get a lot more rapidly realistic and decisive about their need for claim amendments after reviewing the cited prior art.
Furthermore, with more than 80% of IPRs being filed in response to D.C. infringement suits, how many patent owners will even try to amend their claims in suit nor matter how much easier it is to do so?
Naturally, Paul, I agree with everything that you just wrote.
[W]ith more than 80% of IPRs being filed in response to D.C. infringement suits, how many patent owners will even try to amend their claims in suit nor matter how much easier it is to do so?
This is very much a case-by-case question. Some patentees will have a plausible fall back position that is supported by their written description, and gets around the cited art without vitiating their argument for infringement. Some will not. I am kind of indifferent to the percentages in each of those two camps, as long as the process is procedurally fair to all parties.
“IPR experts have said that the main reason so few claim amendments are made in IPRs is actually the unwillingness of patent owners or their counsel to make a timely decision to realistically face the need…”
Who exactly are these “experts?”
Are they people like you, who continuously and shamelessly cheerlead for the IPR?
That might explain the subtle denigration and attempt to blame the applicant for the one percent of allowed amendments.
Aside from the echoing Greg, I know of no one that believes that you have any credibility on the topic, Paul. Not a surprising result of your cheerleading.
Intervening rights plays a larger role in the lack of amendments than recognized or admitted. The majority of IPRs are in the electrical arts, which include the “do it on a computer” patents. Often, especially with a patent nearing the end of its term, the industry has moved on to new and different technology. The 7+ years of past infringement disappears if the claims are narrowed.
Good pain-point Pain. In general [not just in the EE arts] patent suits are far more frequent on patents that are near, at, or up to 6 years after, the end of their patent term.* In those cases intervening rights would drastically reduce potential infringement recoveries.
*for several reasons. Older patents in a given subject are more likely to have broader claims [as you note], But also less prior art, or prior art is harder to find at a date long after the patents original filing date. [E.g., trying to find 20+ year old software or marketing literature.] Also, increasingly, old patents are being sold by corporations to PAEs to assert.
“Older patents” is another reason why few amendments are attempted. An expired patent cannot be amended. For that reason, the PTAB will not consider a motion to amend if the patent is set to expire during a trial (i.e., within one year after institution).
How about this approach for inventors / patent owners:
Assuming two or more (ideally independent) infringed claims in the / each patent; amend half, keep half as is.
So half will lose intervening rights (though presumingly gaining materially greater 102/103 protection); half won’t.
With the PTO moving quickly to recalibrate and reform the PTAB to what Congress actually wanted, expected, intended, and promised all stakeholders (and indeed America), wise infringers will want to very carefully consider whether going / staying exclusively with the district court is now their best bet.
Ignoring for a moment the fact that AIA trials are unconstitutional (sorry SCOTUS and Congress), is the death squad being metamorphosed into the fair squad?
MPGA: Make Patents Great Again.
What supports the premise in your first sentence? Is there hard data that supports this view?
A good questions, this. I find Paul’s assertion intuitively plausible, but intuition is not evidence. What is the evidence for that claim?
To start, our recent update to the Trial Practice Guide was the first since it was published in 2012. In the update, we outlined some non-exclusive factors regarding the institution decision, including considerations regarding follow-on petitions, the overall effect on the economy, the integrity of the patent system, and the like
These factors seems to be begging for ad hoc justifications for any institution decision in either direction.
the overall effect on the economy
That’s actually pretty funny. Contary to the screeching from the tireless squawking screechers, the passage of the AIA has had zero detectable effect on “the economy.”
And the same would be true if s0 ftie w0ft ie patents were abolished. The economy would chug along just as it did before, or better.
The truth is that it’s immeasurable, so no assertion, either pro or con, can be validly made.
“These factors seems to be begging for ad hoc justifications for any institution decision in either direction.”
There be “justification” principles being generated, but I am not sure that the “ad hoc” description is fitting. Was taking to a partner yesterday whose balliwick is in the IPR arena, and he shared that the Office (in his view) is very much trying to avoid any “ad hoc” or other “arbitrary” flag in its decisions, even going so far as to elevate into the (rare) status of precedential for the case of General Plastic v. Canon (IPR2016-01357) – leastwise for non-institution decisions.
Taking to ==> talking to
Hazah Director! Hazah!
Iancu: Indeed, claim amendments have been relatively rare – filed in less than 10 percent of AIA trials – and infrequently granted. Of the already small number of cases where the Board decided a motion to amend, the Board granted or granted in part only 10 percent of such motions. Some have suggested that parties have simply stopped even trying to amend the claims because they see the effort as largely futile.
But the AIA statute specifically provides for claim amendments in IPRs, so in order to fully implement the intent of the AIA, we must find a way to make this amendment process feasible and meaningful.
Is this guy for real? I mean, he has access to all the proceedings so he can see for himself what the “problem” is. The problem is that for most of the IPR’d cases — which are cases that the PTO itself has already deemed to be of suspect validity — the Applicant has already claimed the entire range (broad to narrow) of what it could protect and/or what it deems valuable enough to protect. Patentees “choose” not to amend because they have no support for the amendment they want, or the amendment turns their claim into a picture claim which, in many instances, is not worth anything (e.g., because the patentee itself doesn’t have successful product to protect; its “business” is obtaining licenses to the broad invalid claims that it owns).
I firmly believe that this combination brings more balance to the proceedings,
Translation: “Hey, all my troll bros! I just made it more expensive for the other side to tank you junk claims. Balance!”
What a j0 ke.
If your presumption was correct, that IPR patent owners have not and could not make substantive prior-art-distinguishing amendments due to lack of spec support, then how could making such amendments easier to attempt do any harm?
See comment 4 above for a suggested more realistic reason for the lack of even attempted IPR claim amendments. If so, that is also not likely to change many IPR outcomes.
More generally here, I think Director Iancu is demonstrating that he is a brilliant politician. Giving complainers and even conspiracy buffs actual changes which they think will fix their discontents, and undermines the conspiracy theories, even if it turns out to makes little practical difference in view of the statutory requirements and limitations. Far better than just ignoring complaints.
I think Director Iancu is demonstrating that he is a brilliant politician.
[eye roll]
how could making such amendments easier to attempt do any harm?
I didn’t mean to suggest that “making amendments easier to attempt” was the issue. There are two issues. The first is that there is no problem that needs fixing. The second issue is that the impact of the real message here will do harm, the real message being that the PTAB should be allowing more amendments, period, including amendments that shouldn’t be allowed because they lack support. Because “balance.”
These changes are driven by the same mindset that tells Iancu that eligibility rejections must be driven down. Because “balance”! After all, they are supposed to be “rare” and the “customers” are complaining so … stop making so many 101 rejections, even if that’s the proper rejection to make. Because … “balance.”
The elephant in the room must never be discussed. It wouldn’t hurt anything at all for Iancu to point out that many Applicants have been very slow to understand that 101 is a “real” thing and failure to pay attention to it will result in a lot of money wasted. Nor would it hurt Iancu to admit that the PTO has been historically very slow to recognize and deal with (i.e., cite) the prior art that is relevant to logic claiming and “do it on a computer” claiming generally, which is a huge reason why the AIA was passed and why IPRs and CBM review were created in the first place. Nope. Iancu can’t do that because “his base” would have a massive collective aneurysm.
MM – I am no fan of software patents, but I have to say that providing the routine ability to amend (i.e. narrow in the case of the IPR amendments) seems to be in line with the intent of the AIA.
If new prior art is presented that was not considered by the examiner, then the IPR process should feel a lot like continued examination (albeit with a stronger adversary than a “neutral examiner”).
If narrowing claims results in the claim(s) overcoming the new prior art, then a better (stronger) patent is the result. That seems like a fair outcome to me…
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