Last week, the Patent Trial and Appeal Board of the U.S. Patent Office (PTAB) issued eight decisions in Inter Partes review and Covered Business Method proceedings, in each case invalidating at least some of the challenged claims of the patent at issue. That brings to 15 the total number of patents invalidated in an Inter Partes review or Covered Business Method proceeding since those proceedings became available on September 16, 2012, and keeps at 0 the number of proceedings decided in favor of the patent holder.
While many aspects of post-grant proceedings are still evolving, we have seen enough interim rulings and final decisions to draw a few general conclusions.
The Federal Circuit decision in Novatris AG v. Lee, Nos. 2013-1160, -1179 (Jan. 15, 2014), interpreted 35 USC § 154(b)(1)(B)(i) as it relates to the impact that a Request for Continued Examination (RCE) has on a PTA award for the USPTO’s failure to grant a patent within three years of its filing date (so-called “B delay” PTA). The court partly upheld and partly reversed the USPTO’s interpretation of the statute, rendering a decision that could mean an additional several months of PTA for impacted patents.
The Statute At Issue
The statute at issue in this case is 35 USC § 154(b)(1)(B)(i), which provides:
(B) GUARANTEE OF NO MORE THAN 3-YEAR APPLICATION PENDENCY.- Subj [...]
Now that the holidays are over and the U.S. Congress has headed back to work, it is a good time to review what is happening with U.S. patent reform. The Goodlatte Innovation Act passed the House in December, so attention now turns to the Senate, where the Leahy Patent Transparency and Improvement Act may be the vehicle that moves the current round of U.S. patent reform to the next stage.
The Goodlatte Innovation Act
I wrote about the Goodlatte Innovation Act shortly after it was introduced in the House in October 2013. Although there were some changes between the original bill and the final bill, the primary focus of the Innovation Act remains to curb “abusive patent litigation.” [...]
On October 23, 2014, U.S. Congressman Goodlatte (R-VA) introduced the “Innovation Act,” which is intended “to make improvements and technical corrections” to the Leahy-Smith America Invents Act (AIA) “and for other purposes.” The bulk of the Act focuses on patent litigation, but it also includes significant changes to the new patent trial proceedings (inter partes review, post-grant review, and covered business method patent review), and several miscellaneous substantive changes to other aspects of U.S. patent law. A hearing before the House Judiciary Committee is scheduled for Tuesday, October 29, 2013. Although patent reform has been a bipartisan effort, it is not clear whet [...]
The first set of “technical corrections” to the Leahy-Smith America Invents Act (AIA) was enacted on January 14, 2013. While this legislation did make “technical” corrections to some of the new AIA provisions, it also made substantive changes to both the AIA and other provisions of U.S. patent law, including the Patent Term Adjustment (PTA) statute. This article provides an overview of the substantive changes to the AIA embodied in this law.
Technical Corrections To The AIA
The law at issue stemmed from HR 6621, is titled “To correct and improve certain provisions of the Leahy-Smith America Invents Act,” and also is referred to as the “Technical Corrections Act.”
Changes Relating [...]
Recent U.S. Court of Appeals for the Federal Circuit and USPTO decisions underscore the potential value of challenging a granted U.S. patent in a USPTO proceeding, even if the patent already has been held infringed and/or not invalid in district court litigation. In Fresenius, USA Inc. v. Baxter International, Inc., the Federal Circuit interpreted the ex parte reexamination statutes (35 USC §§ 301-307) as providing that the final cancellation of claims in a reexamination proceeding is binding on concurrent litigation proceedings, as long as the litigation is still pending. In SAP America, Inc. v. Versata Development Group, Inc., the USPTO found that the challenged claims were inva [...]