For the second time this year, the U.S. Patent and Trademark Office is proposing some tweaks to its post-grant trial procedures.
The most notable changes respond to fairness concerns raised by patent owners: allowing them to submit expert declarations with their preliminary responses and narrowing the "broadest reasonable interpretation" claim construction standard in a limited number of cases. PTO Director Michelle Lee outlined the proposals on her blog.
Practitioners said the proposals underscore the willingness of the Patent Trial and Appeal Board, known as the PTAB, to listen and respond to concerns, and that the changes may well lead to new strategies in some cases. But while generally welcoming the changes, the lawyers questioned how deep their impact would be.
The PTAB is proposing to adopt the narrower Phillips claim construction standard used by federal courts, a move patent owners and some legislators have been clamoring for. But the PTAB would only use that standard on patents that are scheduled to expire during PTAB proceedings because those claims can't be amended.
"My personal view is they could still go further" said Mayer Brown partner Sharon Israel, president of the American Intellectual Property Law Association. But Wednesday's proposal is understandable in that it's the same approach the PTAB has taken in reexaminations, said Israel, who will be discussing the proposals next week at a "road show" co-sponsored by the PTO and AIPLA in Santa Clara.
The other major proposal addresses another longstanding gripe of patent owners—that the PTAB won't consider their evidence until after a decision is made to institute proceedings.
When the PTAB was created three years ago, the expectation was that patent owners would focus their preliminary responses on procedural defects in petitions, such as the failure to identify real parties in interest, said Knobbe Martens Olson & Bear partner Brenton Babcock. Substantive arguments would be reserved for trial. "But that's not what's happened, I think to the board's surprise," said Babcock, who heads Knobbe's USPTO trials and post-grant proceedings group.
Instead, patent owners have focused more on stopping inter partes review proceedings before they get started, bringing both procedural and substantive arguments in their preliminary responses. The inability to back all of those arguments with evidence has been seen as unfair in some quarters, Babcock said.
"But," he said, "it means the patent owners now have to line up expert evidence much more quickly." Under the current rule, patent owners have eight to nine months from the filing of a petition to submit an expert declaration. Now, if a patent owner chooses to submit expert evidence early, it will be three months. "It will be a little more of a scramble on the patent owner's side," he said.
Further, said Paul Hastings IP partner Joseph Palys, the board is proposing that disputed facts be viewed in the light most favorable to the petitioner for purposes of deciding whether to institute. "They kind of gave the patent owners something and then curtailed it a bit," said Palys, whose practice includes post-grant proceedings.
Still, Palys credits the board with trying to get all the information it needs before making an institution decision, which cannot be appealed.
The board also is proposing to implement Rule 11 style sanctions to police misconduct at the PTAB. Knobbe's Babcock said he doesn't believe misconduct is an issue in run-of-the-mill PTAB litigation, but that the board may have in mind the occasional outlier case.
Reprinted with permission from the August 19, 2015 edition of The Recorder © 2015 ALM Properties, Inc. All rights reserved. Further duplication without permission is prohibited.
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