Board finds Internet advertising patent not eligible for CBM Review under Federal Circuit Secure Access and Unwired Planet standard
The Patent Trial and Appeal Board recently denied Cover Business Method (CBM) review of an Internet advertising display patent assigned to KlausTech. The petitioner, Google, argued that the claim limitation “retaining … a record of the browser identity” should be construed as financial in nature because the specification describes determining compensation for publisher websites and billing advertisers as the only reasons for the retaining the records. See Google Inc. v. KlausTech, Inc., CBM2016-00096, Paper 12 at 5-9 (PTAB April 6, 2017) (Decision Denying Request for Rehearing). However, the Board disagreed, focusing on only the language of the claims themselves:
In Blackberry Corp. v. Zipit Wireless, Inc., IPR2014-01506, the Patent Trial and Appeal Board found that testimony of the Patent Owner’s declarant was owed diminished weight due to misstatements in the declarant’s Curriculum Vitae (“CV”). However, despite the reduced weight, the Board nevertheless found that the Patent Owner had a winning claim construction argument as to the meaning of a claimed “graphical symbol.” As a result, the Board determined that the Petitioner failed to establish that any claims of the patent-at-issue were disclosed or made obviousness by the art of record.
On April 1, 2016, the USPTO published final amendments to the Rules of Practice for PTAB AIA trials. The amendments are effective May 2, 2016, and apply to all AIA petitions, whether they were filed before, on or after the effective date. Highlights include:
1) 37 C.F.R. § 42.11: The amended rules require that every paper be signed and that the signature complies with the signature requirements set forth in 37 C.F.R. § 10.18(a). The act of presenting a paper to the PTAB will be considered a certification as set forth in 37 C.F.R. § 10.18(b). Under rule 10.18(b), the party presenting a paper certifies that all statements made are believed to be true and that the party shall be subject to criminal penalties for any knowingly and willfully false statements or representations. The amended rules allow the PTAB to impose sanctions on an attorney that violates this rule and provides a procedure for the opposing party to file a motion for sanctions.
In PPC Broadband Inc. v. Corning Optical Commc’ns, Docket No. 2015-1364 (Fec. Cir. 2016), the Federal Circuit strongly relied on the intrinsic evidence of the specification to limit the Patent and Trial Appeal Board’s broadest reasonable interpretation of a term at issue. During the instituted inter partes review (IPR) of US Patent 8,323,060, the PTAB construction of the term “reside around” resulted in a meaning of “in the immediate vicinity of; near”. Id. at p. 5. As a result of this interpretation, the PTAB determined that the claims at issue reciting this term were obvious. Reviewing the claims de novo (based on intrinsic evidence) and its factual determinations (based on extrinsic) for substantial evidence per In re Sullivan, 498 F.3d. 1345, 1350 (Fed. Cir. 2007), the Court remanded the IPR proceedings for further proceedings.
Federal Circuit Reverses PTAB due to Unreasonably Broad Claim construction and Upholds Idle Free Requirement that Patent Owner Must Show that Substitute Claims are Patentable Over All Prior Art of Record
In the first reversal of a Final Decision by the Patent Trial and Appeal Board (PTAB), the Federal Circuit reversed the PTAB’s construction of several claim limitations and remanded the PTAB’s determination of on patentability. Microsoft v. Proxconn, 2014-1542, -1543, Fed. Cir. decided June 16, 2015. This decision shows that the “broadest reasonable construction” adopted by the USPTO during patent office trails in 37 C.F.R. § 42.1000(b) must consider the context of the specification and previous file history.
On April 29, 2015, the Judiciary Committee of the Senate introduced an anti-patent troll bill (Protecting American Talent and ENTrepreneurship Act — or PATENT Act — S.1137). The Senate bill is very different from a competing bill that was introduced by the House of Representatives in February. Focusing on patent office trials, highlights from the bill are:
Like the House bill, the Senate bill would reduce the estoppel provision for a PGR petitioner. This would-allow patent challengers to start PGR proceedings without the substantial “chilling” effect of not knowing how far estoppel would apply, should the PGR prove unsuccessful.
House Reintroduces Bill that would Eliminate BRI standard in IPR and PGR Proceedings one day after Federal Circuit finds BRI standard is proper
On February 5, 2015, the Judiciary Committee of the House of Representatives’ re-introduced an anti-patent troll bill (Innovation Act of 2015, H.R. 9). This bill is essentially the same as the bill that was passed by Congress in December, 2013 but stalled in the Senate.
In Trivascular, Inc. v. Shaun L.W. Samuels (IPR2013-00493, Paper No. 45, December 3, 2014), the PTAB held that Trivascular (Petitioner) had not proved that any of the instituted claims in the inter partes review (IPR) of US Patent 6,007,575 are unpatentable. It is interesting to note that while the Patent Owner, Shaun L.W. Samuels , submitted two expert declarations, the Petitioner, Trivascular, did not submit an expert declaration.
Ariosa Diagnostics v. The Board of Trustees of the Leland Stanford Junior University. (IPR2013-00308, Paper No. 40, November 19, 2014)
In a recent inter partes review (IPR), the Patent and Trial Appeals Board (PTAB) found that while only some of the grounds of unpatentability were sufficient to meet the “preponderance of the evidence standard” for determining claims unpatentable, all of the claims reviewed were found to be unpatentable. In its decision, the PTAB construed multiple claim terms using the Broadest Reasonable Interpretation (BRI) before determining that all of the claims were unpatentable as being either anticipated or obvious in view of the cited references. Ariosa at 37.
Broadest Reasonable Interpretation vs. Ordinary and Customary Meaning: – Challenges Introduced by Applying Different Claim Construction Standards at the PTAB and District Courts
Inter Partes Review (IPR) is quickly becoming a popular means to challenge the validity of issued patents at the United States Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). According to USPTO statistics, 1,700 petitions for IPR were filed between September 2012 and August 28, 2014, and new filings continue to accelerate. Indeed, IPR challenges appear to have become a common defense tactic in modern patent litigation because of IPR’s lower bar for finding issued patents invalid, expedited timeline, and limited discovery. These advantages appear to provide alleged infringers with a better avenue for invalidating an asserted patent compared to traditional district court litigation. IPR also furthers Congress’ intent in creating new post-grant proceedings in the America Invents Act (AIA) to “provid[e] quick and cost effective alternatives to litigation.” However, by applying different claim construction standards at district courts and at the PTAB, new challenges and potential pitfalls have been introduced to both patent owners and challengers.