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Say Goodbye: Argument Not Presented in IPR Petition Is Waived

by Thomas DaMario | Nov 2, 2023 | Patents

In a split decision, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board patentability determination, finding that the challenger’s appeal arguments were not raised in its inter partes review (IPR) petitions and were therefore waived. Netflix, Inc. v. DivX, LLC, Case Nos. 22-1203; -1204 (Fed. Cir. Oct. 25, 2023) (Linn, Chen, JJ.) (Dyk, J., dissenting).

DivX owns two patents directed to media streaming technologies. In media streaming, content (such as a movie) is typically stored as separate “streams” suitable for different device capabilities. A playback device must be able to select the appropriate media file from the available streams. To accomplish this selection, the challenged patents discuss a method for automatically generating top-level index files that describe the location and content of container files having streams of media. In particular, an independent claim in each of the patents recites a method comprising “receiving” a request for content, “retrieving” a list of assets associated with the content, “filtering” the list of assets using device capability, “generating . . . a top level index file describing each asset in the filtered list of assets” and “sending the top level index file” to the playback device.

Netflix challenged the two patents in two separate IPR proceedings based on two combinations of prior art references: Pyle and Marusi, and Lewis and Marusi. The Board issued lengthy final written decisions for both petitions, closely analyzing the arguments and evidence presented by Netflix and DivX. The Board determined that Netflix failed to meet its burden of showing that the challenged claims were unpatentable. Netflix appealed.

At the outset, the Federal Circuit noted that “Netflix’s appeal does not challenge any of the Board’s substantive analysis.” It instead makes a purely procedural argument, accusing the Board of “falling down on the job by failing to address several arguments purportedly raised in Netflix’s petitions.” One such argument that the Court identified related to the “filtering” claim element. The Court, the Board and Netflix all agreed that Netflix had advanced an argument that Pyle teaches the filtering element based on Pyle’s selection of a preexisting manifest. Netflix, however, argued on appeal that it also had advanced an argument that Pyle teaches the filtering element based on Pyle’s creation of a new manifest. The Board found that this argument was not presented in Netflix’s petition, and the Federal Circuit agreed. At the Federal Circuit, Netflix identified various block quotes in its petition that purported to support the argument. However, the Court found that “nothing in the quoted language itself signals to a reader that an optimized new manifest equates to ‘filtering the list of assets.’” Furthermore, “the petition made it quite clear Netflix was focused on Pyle’s pre-existing manifest . . . Netflix thus showed it knew how to put forward a clear mapping of Pyle to the filtering limitation, but never connected Pyle’s new manifest to that limitation.”

Judge Dyk dissented. In his opinion, Netflix had not failed to advance the “new manifest” [...]

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Suite! Claim Splitting Privity Focuses on Party Relationship, Not Claim Relationship

by Amol Parikh | Nov 2, 2023 | Trade Secrets

The US Court of Appeals for the Fifth Circuit revived a hotel group’s federal trade secret suit against two former employees, finding that the district court did not have enough information to conclude that the hotel group improperly split claims between federal and state actions. Armadillo Hotel Group, LLC v. Harris, Case No. 22-50945 (5th Cir. Oct. 20, 2023) (Smith, Southwick, Higginson, JJ.)

Armadillo Hotel Group is a buyer and operator of modular and mobile structures throughout North America. According to Armadillo, it hired Todd Harris and Jason McDaniel to oversee Armadillo’s construction operations and its hotel, food and beverage operations. The relationship deteriorated after a few years, leading to Harris and McDaniel’s resignations.

Harris and McDaniel subsequently sued Armadillo Hotel Group Management (AHG Management) in Texas state court alleging that they entered employment agreements with AHG Management as part of the joint venture, but AHG Management breached these agreements by failing to pay the agreed upon salary, bonuses and profit-sharing interests. The precise relationship between Armadillo and AHG Management is unclear. AHG Management filed counterclaims, agreeing that it hired Harris and McDaniel but arguing that they breached their fiduciary duties by failing to devote their full attention to their responsibilities and diverted business opportunities to their own companies, which allegedly competed with AHG Management.

The parties conducted discovery in state court, after which AHG Management filed an amended counterclaim in state court, removing its claim against Harris and McDaniel for improper expropriation of proprietary and confidential documents. That same day, Armadillo filed a complaint in federal district court against Harris, McDaniel and several new parties, including Southeastern Disaster Relief Services (SDRS), a business affiliated with McDaniel; Battlement Mesa Consulting, LLC (BMC), a business affiliated with Harris; and Grand Majestic Lodge (GML), a competitor of Armadillo. Armadillo’s complaint alleged that Harris and McDaniel misappropriated trade secrets that they shared with SDRS, BMC and GML during and after their employment with Armadillo. The complaint also included claims under the federal Defend Trade Secret Act (DTSA), alleging that the five defendants conspired to misappropriate the trade secrets.

Harris, McDaniel, SDRS and BMC moved to dismiss the federal complaint for impermissible splitting of claims relating to Harris and McDaniel’s employment between the state court proceedings and this new federal lawsuit. The district court granted the motion with prejudice. While acknowledging the “apparent difference between Defendant AHG Management LLC in the state-law action and Plaintiff Armadillo in [the district court] case,” the district court found that the prohibition against claim splitting applied because the same claims were first removed from AHG Management’s counterclaim in the state court proceedings and then asserted by Armadillo in the federal action. The district court also found that the claims arose out of the same nucleus of operative facts—Harris and McDaniel’s employment—and shared a common factual predicate. Armadillo appealed.

The rule against claim splitting prohibits a party or parties in privity from simultaneously prosecuting multiple suits involving the same subject matter against the same defendants. In situations where a [...]

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No Money, Mo’ Problems: Speculative Damages Award Cannot Stand

by Kathleen Lynch | Oct 26, 2023 | Patents

The US Court of Appeals for the Federal Circuit upheld a district court’s claim construction and jury instructions but reversed a premature judgment as a matter of law (JMOL) on obviousness and an imprecise damages award. Cyntec Company, Ltd. v. Chilisin Electronics. Corp., Case No. 22-1873 (Fed. Cir. Oct. 16, 2023) (Moore, Stoll, Cunningham, JJ)

Cyntec sued Chilisin for willful infringement of two patents related to molded chokes, which are component parts in batteries and power supplies. Four events at trial led to this appeal. First, the district court construed the disputed “by means of” term by its plain meaning but also instructed the jury that when a result occurs “by means of” a factor, that factor “has an impact on”—but may not be the “only potential cause” of—the result. Second, Chilisin presented invalidity evidence, arguing that the asserted claims were obvious by one prior art reference in light of another.

Before Chilisin could cross-examine Cyntec’s rebuttal expert, the district court granted Cyntec’s JMOL, finding the patents not obvious. In the third event that led to the appeal, Cyntec presented a market-share lost profits theory of damages based on expert testimony. Chilisin unsuccessfully moved to exclude the testimony as being speculative and unreliable. The jury awarded more than $1.8 million in damages and the district court subsequently granted enhanced damages totaling more than $5.5 million. As for the fourth event, Chilisin unsuccessfully moved for JMOL and a new trial on multiple issues. Chilisin then appealed.

The Federal Circuit reviewed three issues on appeal:

The nonobviousness JMOL
The infringement findings
The damages award.

Starting with nonobviousness, the Federal Circuit reversed the JMOL and remanded. While obviousness is ultimately a legal question, it relies on “numerous underlying factual findings,” including the scope/content/differences of prior art, the skill level of a person of ordinary skill in the art and objective indicia of nonobviousness such as commercial success. The Court found Chilisin had presented enough evidence to allow a jury to find the asserted claims obvious in light of the two prior art references presented. The Federal Circuit also analyzed the district court’s reasoning regarding the prior art and found that its “conclusions are either insufficient to support JMOL or unsupported by the evidence.” Thus, it was improper to withhold a partial fact issue from the jury.

Next, the Federal Circuit analyzed the infringement issue, dividing the analysis into the district court’s claim construction and jury instructions, and the jury’s infringement finding. Chilisin argued that the disputed term “by means of” should signal but-for causation, meaning the factor must cause the result. The Court agreed that this was one possible reading, but because the claim language did not read “by exclusive/primary means” or something similar, the disputed term could also encompass “mere contribution.” The Federal Circuit cited to the specification in support of its claim interpretation and ultimately upheld the district court’s claim construction and the consistent jury instructions. The Court rejected Chilisin’s argument that there was insufficient evidence of infringement, concluding [...]

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Rough Seas Ahead? Supreme Court to Reconsider Chevron Doctrine

by Amol Parikh | Oct 26, 2023 | Cert Alert

The Supreme Court of the United States has agreed to reconsider the Chevron doctrine, which instructs courts to defer to a federal agency’s reasonable interpretation of an ambiguous statute that US Congress delegated to the agency to administer. Relentless, Inc. v. Department of Commerce, Case No. 22-1219 (Supr. Ct., Oct. 13, 2023) (certiorari granted). The question presented is:

Whether the Court should overrule Chevron or at least clarify that statutory silence concerning controversial powers expressly but narrowly granted elsewhere in the statute does not constitute an ambiguity requiring deference to the agency.

The case involves the Magnuson-Stevens Fishery Conservation and Management Act (MSA), which governs fishery management in federal waters. The MSA states that, with the approval of the US Secretary of Commerce, the National Marine Fisheries Service (NOAA Fisheries) may require fishing vessels to carry federal observers who enforce the agency’s regulations. Congress appropriates funds for these observers. Deeming annual congressional appropriations for the federal observers insufficient, NOAA Fisheries asserted a right to require fishing vessels to enter into contracts to pay the federal observers. The US Court of Appeals for the First Circuit approved this practice, finding that the mere fact that the MSA provides for federal observers gave the agency carte blanche to charge the regulated party for those observers.

This case will be heard in tandem with Loper Bright Enterprises v. Raimondo, which raises a similar Chervon doctrine (deference) issue, during the January 2024 argument session.

Here’s a Great Concept: Fraud After Registration Is Not a Basis for Cancellation

by Paul Devinsky | Oct 26, 2023 | Trademarks

In a split panel decision, the US Court of Appeals for the Federal Circuit overturned the Trademark Trial & Appeal Board and ruled that a fraudulent declaration under Section 15 of the Lanham Act is not a basis for cancellation of an otherwise incontestable registered mark. Great Concepts, LLC v. Chutter, Inc., Case No. 22-1212 (Fed. Cir. Oct. 18, 2023) (Dyk, Stark, JJ) (Renya, J., dissenting).

Great Concepts applied to register “DANTANNA’S” as a mark for a “steak and seafood restaurant” in 2003, which resulted in a registration in 2005.

In 2006, Chutter’s predecessor-in-interest, Dan Tana, petitioned the Board to cancel the registration based on an alleged likelihood of confusion with Tana’s common law “DAN TANA” mark for restaurant services. That cancellation proceeding was suspended during a pending civil action in which Tana successfully sued Great Concepts for trademark infringement.

Afterward, the Board dismissed Tana’s cancellation proceeding “based on petitioner’s apparent loss of interest” after he failed to respond to the Board’s order to show cause.

Meanwhile, prior to the finality of the infringement action, Great Concepts’ former attorney, Frederick Taylor, filed a combined declaration of use (pursuant to Section 8 of the Lanham Act) and a declaration of incontestability (pursuant to Section 15). In the Section 15 portion of the declaration, in relation to Great Concepts’ effort to obtain incontestable status for its already registered mark, Taylor falsely declared “there is no proceeding involving said rights pending and not disposed of either in the U.S. Patent and Trademark Office [PTO] or in the courts.”

Chutter then petitioned the PTO for cancellation of the registration based on Taylor’s false Section 15 affidavit. The Board found that Taylor’s Section 15 declaration was fraudulent and cancelled the registration under Section 14 of the Lanham Act. Great Concepts appealed.

The Federal Circuit was confronted with the issue of whether Section 14, which allows a third party to seek cancellation of a registration when the “registration was obtained fraudulently,” permits the Board to cancel a trademark’s registration based on a fraudulent Section 15 declaration, filed for the purpose of acquiring incontestability status for its already registered mark. Reversing the Board’s decision, the Court held that Section 14 does not permit the Board to cancel a registration in these circumstances.

Focusing on the statutory language, the Federal Circuit noted that Section 14 permits a third party to file “[a] petition to cancel a registration of a mark” … “[a]t any time if” the registered mark’s “registration was obtained fraudulently.” Explaining that the word “‘obtaining’ has a plain and ordinary meaning,” i.e., “[t]o get hold of by effort; to gain possession of; to procure…,” the Court then noted that, by contrast, Taylor’s fraudulent Section 15 declaration only sought incontestable status for its already registered trademark—a different right from registration.

Since “fraud committed in connection with obtaining incontestable status is distinctly not fraud committed in connection with obtaining the registration itself” and since fraud committed in connection with an incontestability declaration is not found among the “numerous bases [...]

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Downloaded: No Relief From Stipulated Claim Construction

by Ian J. Howard | Oct 26, 2023 | Patents

The US Court of Appeals for the Federal Circuit ruled that a claim interpretation that flows naturally from the parties’ stipulated claim construction is binding on the parties even if the interpretation reads preferred embodiments out of the claims. Finjan LLC v. SonicWall, Inc., Case No. 22-1048 (Fed. Cir. Oct. 13, 2023) (Reyna, Cunningham, JJ.) (Bryson, J., dissenting).

In 2017, Finjan sued SonicWall for infringing several of Finjan’s patents related to cybersecurity technology systems that identify malicious material in downloadable content and programming code. The asserted patents included claims directed to ways to protect network-connectable devices from undesirable downloadable operations. During claim construction, the parties stipulated that a “downloadable” should be construed as “an executable application program, which is downloaded from a source computer and run on the destination computer.”

SonicWall moved for summary judgment, arguing that it did not infringe the patents because the accused devices received and inspected supposed “downloadables” as unextracted packets, which do not constitute executable files under the stipulated claim construction. The district court granted partial summary judgment in favor of SonicWall, finding that Finjan failed to offer evidence that “the accused […] products ‘ever possess a reassembled file or executable application.’” Finjan appealed.

Finjan argued that the district court’s ruling was incorrect because it impermissibly grafted additional requirements onto the stipulated claim construction, and that the district court’s interpretation was inconsistent with claim language found in other parts of the asserted patents. The Federal Circuit rejected these arguments, noting that the district court’s infringement ruling followed directly from the parties’ stipulated definition of the term “downloadables.” Under the stipulated claim construction and in accordance with Finjan’s own expert’s interpretation of the meaning of “executable,” a device “that merely receives and forwards packets without reassembling their contents does not receive a downloadable . . . because that device does not receive an executable application program.” The Court emphasized that Finjan could not challenge its earlier claim construction stipulation. Further, the Court noted that the stipulated definition of “downloadables” was derived verbatim from the specifications of two of the asserted patents.

Judge Bryson dissented for two reasons. First, he noted that the district court’s interpretation of the claims would read preferred embodiments out of the patent and effectively eviscerate from the patent’s scope any device that screens content from the internet. Second, Judge Bryson found that elsewhere in the asserted patents’ specifications it was clear that the meaning of “downloadables” used by the district court was incorrect. Contrary to the majority, Judge Bryson did not find the stipulated claim construction dispositive because Finjan merely challenged the meaning of the word “executable” within the stipulated claim construction, rather than the contents of the stipulation itself.

Practice Note: This decision offers a few helpful lessons for practitioners. First, it is important to write claims in language that is both expansive enough to encompass all intended embodiments but precise enough to survive invalidity challenges. By carefully selecting specific but broad language, and writing claims more accurately, patentees may avoid semantic noninfringement arguments. [...]

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Go With the Flow: “A” Still Means “One or More”

by Benjamin Ediger, Ph.D. | Oct 26, 2023 | Patents

The US Court of Appeals for the Federal Circuit reversed a claim construction that was adopted during an inter partes review (IPR) because the Patent Trial & Appeal Board erred in construing the contested limitation as limited to a single sample rather than including the possibility of plural samples. ABS Global, Inc. v. Cytonome/ST, LLC, Case No. 22-1761 (Fed. Cir. Oct. 19, 2023) (Reyna, Taranto, Stark, JJ.)

ABS and Genus plc (collectively, ABS) filed a petition to institute an IPR on a patent owned by Cytonome. The patent claims microfluidic devices for particle (e.g., cells, molecules and other particles of interest) processing. The claimed devices exploit the principles of laminar flow to hydrodynamically focus particles at a certain point along the flow path for inspection or other purposes. The claimed devices are capable of hydrodynamically focusing the flow of a particle-containing fluid (the sample fluid) by abutting the sample fluid on more than one side with a fluid that does not contain particles (the sheath fluid). Generally, the faster the sheath fluid flows relative to the sample fluid the more the sample fluid’s corresponding cross-section is compressed. Figure 3A of the patent is an example of how the claimed devices use sheath fluid (SF) to focus a sample fluid (S) along a channel (CL):

ABS’s petition argued that the challenged claims were anticipated or obvious at least in view of a prior publication that taught devices with a split sample stream. The Board disagreed, construing the challenged patent claims as directed to a single sample stream and concluding that ABS failed to demonstrate why those of ordinary skill—in view of the art cited in ABS’s petition—would have modified the prior art split sample stream into the claimed single sample stream. ABS appealed.

The Federal Circuit found that the Board erred in construing the challenged claims. In construing the independent claim as being limited to a single sample stream, the Board focused on two limitations: “an inlet configured to receive a sample stream” and “a fluid focusing region configured to focus the sample stream….” In limiting the claim to a single sample stream, the Board relied on the definite article preceding the second recitation of “sample stream” and noted that a plural-allowing interpretation would be inconsistent with a dependent claim that further requires the focusing fluid to be “introduced into the flow channel symmetrically with respect to a centerline of the sample stream.”

The Federal Circuit reversed the Board’s claim construction, concluding that the dependent claim was not inconsistent with a plural-streams interpretation for the independent claim and that the Board committed two errors in construing both claims. First, the Board did not properly apply what the Court refers to as the “general rule,” which is applicable to open-ended “comprising” claims that recite “a” or “an” before a noun. The Court explained that such a limitation should be construed to mean one or more unless context sufficiently indicates otherwise. Second, [...]

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Decoding Algorithms: Structural Sufficiency for Means-Plus-Function Claim Judged From Skilled Artisan’s Perspective

by Kavya Rallabhandi | Oct 19, 2023 | Patents

The US Court of Appeals for the Federal Circuit reiterated that in the context of construing computer-implemented means-plus-function limitations, if the specification discloses some arguable algorithm, even if a party contends that the algorithm is inadequate, the sufficiency of the purportedly-adequate structure disclosed in the specification must be evaluated in light of the knowledge possessed by a skilled artisan. Sisvel International S. A. v. Sierra Wireless, Inc., Case No. 22-1493 (Fed. Cir. Oct. 6, 2023) (Moore, Clevenger, Chen, JJ.)

Sisvel owns a patent directed to methods of channel coding when transmitting data in radio systems. The patent uses techniques called “link adaptation” and “incremental redundancy,” which are alleged to provide improvement over prior channel coding techniques. Sierra filed a petition for inter partes review (IPR) challenging certain claims as obvious over the Chen reference by itself and challenging those and other claims as obvious over the combination of the Chen and Eriksson references or the combination of the Chen and GSM references. The Patent Trial & Appeal Board found that some challenged claims were obvious based on Chen alone and that other claims were patentable over the proposed combination of references. Both parties appealed.

Sisvel appealed the Board’s unpatentability finding, arguing that Chen failed to disclose a second puncturing pattern. Sisvel also argued that the Board did not provide a sufficiently detailed explanation to support its finding that Chen disclosed the claimed “combining” limitation and ignored Sisvel’s rebuttal arguments. The Federal Circuit disagreed with Sisvel on both counts and affirmed the Board’s determination. Regarding the second puncturing pattern, the Court found that the independent claim required a “first puncturing pattern” and a “second puncturing pattern,” and that Chen expressly described that its coded transmissions are “generated by using punctured codes” and that “[p]uncturing reduces the number of code symbols to be retransmitted.” Therefore, the Court found that substantial evidence supported the Board’s finding that Chen taught a second puncturing pattern. Regarding the “combining” limitation, the Court affirmed the Board’s decision and concluded that Chen’s disclosure of “accumulating the code symbols from the transmitted and retransmitted coded data blocks,” also referred to in Chen as “interleaving,” taught the “combining” limitation. Overall, the Court determined that the Board’s analysis was sufficiently detailed, adequately addressed Sisvel’s related arguments and was supported by substantial evidence.

Sierra appealed the patentability finding, arguing that the Board’s finding that a skilled artisan would not have been motivated to combine Chen and the GSM references was not supported by substantial evidence. Sierra also argued that the Board erroneously found insufficient corresponding structure in the specification for the term “means for detecting.” The Federal Circuit concluded that substantial evidence supported the Board’s finding of a lack of motivation to combine Chen and the GSM references, but that the Board erred in analyzing the “means for detecting” limitation. Regarding motivation to combine, the Court explained that although an IPR petitioner has a low burden of explaining why a skilled artisan would have been motivated to combine various references to form [...]

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A Matter of Style: No Need to Select “Primary” Reference in Obviousness Challenge

by Cecilia Choy, Ph.D. | Oct 19, 2023 | Patents

The US Court of Appeals for the Federal Circuit affirmed an obviousness decision by the Patent Trial & Appeal Board, explaining that nothing requires a petitioner to identify a prior art reference as a “primary reference” in an obviousness challenge. Schwendimann v. Neenah, Inc., Case Nos. 22-1333; -1334; -1427; -1432 (Fed. Cir. Oct. 6, 2023) (Prost, Clevenger, Cunningham, JJ.)

Jodi Schwendimann filed lawsuits accusing Neenah of infringing several patents related to transfer sheets and methods for transferring images onto dark fabrics. Neenah filed several petitions for inter partes review (IPR) challenging various claims based on obviousness. The Board instituted the IPR challenges.

Schwendimann’s patents addressed a method for ensuring that dark images could be seen when transferred onto dark fabrics. Multilayer image transfer sheets were known in the prior art, teaching a two-step process to first apply a light background onto dark fabric and then apply the dark image on top. Schwendimann’s claims described a single-step solution, incorporating a white background, possibly of titanium dioxide, into the image transfer sheet so that a white background and dark image could be applied simultaneously onto a dark fabric.

All of the IPR petitions cited Kronzer as a prior art reference. Kronzer described multilayered image transfer sheets with varying configurations, although it lacked white pigment in a layer to transfer an image onto dark fabric. Another prior art reference, Oez, taught the use of a white pigment, such as titanium dioxide, in multilayered image transfer sheets. Schwendimann did not dispute that Kronzer and Oez taught or suggested all limitations recited in the challenged claims. Instead, she argued that there was no motivation for a skilled artisan to combine the references or to expect that such combination would yield a reasonable expectation of success. The Board considered and addressed each argument, relying on Neenah and Schwendimann’s experts’ testimony and the complementary and compatible nature of the references. The Board found the challenged claims obvious over Kronzer in view of Oez. Schwendimann appealed.

Schwendimann argued that substantial evidence did not support the Board’s findings that a skilled artisan would have been motivated to combine Kronzer and Oez and would have had a reasonable expectation of success in making the proposed combination. The Federal Circuit explained that substantial evidence means “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion” and considered these two arguments together.

The Federal Circuit found that Schwendimann failed to show that the Board’s findings were not supported by “substantial evidence.” Like the Board, the Federal Circuit used both expert witnesses’ testimonies to explain that the references shared a common goal of improving image transfer characteristics. The Court found that Schwendimann’s arguments that Oez taught away from the proposed combination failed because Oez’s disclosure did not discourage a skilled artisan from using white pigment identified in the challenged patents or lead the skilled artisan in a direction divergent from the path taken in the challenged patents. Her argument that adding titanium dioxide into Kronzer’s transfer sheets could [...]

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PTO Proposes Rules Promoting Independence in Board Decision-Making

by Peter Brunovskis, PhD | Oct 19, 2023 | Uncategorized

Seeking to bolster the independence of administrative patent judge (APJ) panels when issuing decisions and increase transparency regarding Patent Trial & Appeal Board processes, the US Patent & Trademark Office (PTO) issued a notice of proposed rulemaking concerning the pre-issuance internal circulation and review of decisions. Rules Governing Pre-Issuance Internal Circulation and Review of Decisions Within the Patent Trial and Appeal Board, 88 Fed. Reg. 69578 (Oct. 6, 2023)

The proposed rules were developed in response to a July 2022 request for comments and would refine and codify interim processes and standards that have been in place since May 2022. If adopted, the proposed rules would be codified as Section 43 in Title 37 of the Code of Federal Regulations (37 C.F.R. §§ 43.1-43.6) relating to Board proceedings pending under 37 C.F.R. §§ 41 and 42.

Under the rules in newly proposed §§ 43.3 and 43.4, prior to issuance of a decision by the panel, senior PTO management and non-management APJs at the PTO (as defined in § 43.2) would be barred from communicating, directly or through intermediaries, with any panel member (unless they were themselves panel members) regarding the decision. Limited communications would be permitted for procedural status and generally applicable paneling guidance that don’t directly or otherwise influence the paneling or repaneling of any specific proceeding. The proposed rules would not forbid a panel member from requesting input on a decision prior to issuance from non-panel senior APJs, however. The proposed rules would stipulate that it is within the panel’s sole discretion to adopt any edits, suggestions or feedback from non-panel APJs.

The proposed rules substantially follow the interim processes in place except for a change regarding pre-issuance circulation of decisions to a pool of non-management APJs, known as the circulation judge pool (CPJ). Under the interim process, certain categories of Board decisions are required to be circulated to the CPJ prior to issuance. Those decisions include all America Invents Act (AIA) institution decisions, AIA final written decisions, AIA decisions on rehearing, inter partes reexamination appeal decisions, designated categories of ex parte appeals, ex parte reexamination appeals and reissue appeal decisions and all Board decisions (including AIA and ex parte appeal decisions) following a remand from the US Court of Appeals for the Federal Circuit. Under the proposed rules, circulation to the CJP would be optional.

The PTO will accept comments until December 5, 2023, through the Federal eRulemaking Portal.