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Our business is to create for our clients valuable property
and contractual rights in their ideas.
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April 2016
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(951) 395-9910
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EDITORIAL
This month I attended a legal seminar entitled "Aftershocks of the AIA's Post Grant Proceedings: Its Advocates & Critics." The AIA is an acronym for American Invent Act, effective March 16, 2013. The AIA enables anyone to challenge the validity of a U.S. patent before a broad of patent/technical experts in the patent office. Over the past three years the number of petitions filed with the PTAB, and granted, has grown exponentially. About 80% of the claims challenged have been found invalid. Because of this alarming trend, one of the panel members pointed out why it is important
strategically that the patentee maintain a continuation patent application pending. A continuation patent application is usually filed a few days before the original patent is granted. As long as this continuation patent application is pending, new claims can be filed distinguishing the invention from prior art that was the basis for invalidating a claim of the original patent. Commandment IV discussed in my book states,"
You Shall Keep On Filing Patent Applications." In light of the new AIA post grant proceedings,
now more than every, it is critical to obey this commandment.
John J. Connors
Patent attorney
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A New Era In Patent Law
The main objective of this newsletter is to alert you to the rapidly changing legal environment in United States patent law.
The 2013 American Invents Act (AIA) made sweeping changes in the United States patent law. In the early 1990's Global Corporations began lobbying Congress to change the United States patent law to conform to the international model based on the 19th Century German patent law. The AIA is the desired result of their lobbying efforts.
Over the course of the next few decades, these changes will affect the way commercially valuable ideas are developed and protected. Will these AIA changes be good for society as a whole? Or will these AIA changes primarily assist the economically powerful? Several of these AIA changes are now being challenged in the courts, and we anticipate that the United States Supreme Court will be making determinations as to the constitutionality of many of these changes.
Those adversely affected by these AIA changes are now lobbying Congress to enact legislation that will alleviate hardships caused by these changes. A major concern of our clients is the negative impact post-grant patent office proceedings have on the ability of startup companies to raise capital to launch a business based on a patented invention. It may be virtually impossible to persuade an investor to risk capital if the patent's validity can be challenged in such proceedings. Especially since a lawsuit seeking to stop a competitor from selling the patented invention can be stayed until the issue of validity is decided, which could be many years. Consequently, the AIA post-grant proceedings are a disincentive to invest in startup companies based on a patented invention.
CLICK HERE IF YOU WISH TO SUPPORT LEGISLATION PREVENTING A PATENTED INVENTION OF A SMALL ENTITY FROM BEING CHALLENGED IN POST- GRANT PROCEEDINGS IN THE UNITED STATES PATENT AND TRADEMARK OFFICE.
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Connors and Associates Staff
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Thomas Connors, John J. Connors, Beth Ellison and Brady Connors
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US SUPREME COURT TO REVIEW CLAIM CONSTRUCTION STANDARD
In Cuozzo Speed Technologies LLC v. Lee
, U.S. No. 15-446 ("Cuozzo") the US Supreme Court is presented with
two issues:
(1) Did the Court of Appeals for the Federal Circuit (CAFC) err in holding that, in interpartes review (IPR) proceedings, the Patent Trial and Appeal Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning?
(2) Did the CAFC err in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board's decision to institute an IPR proceeding is judicially unreviewable?
BROADEST REASONABLE INTERPRETATION OR
PLAIN AND ORDINARY MEANING
According to Cuozzo the inter partes review (IPR) has been both unexpectedly popular and surprisingly lethal. Since the inception of IPR patent challengers have filed over 3,400 petitions, and nearly 85% of the IPR proceedings to date have resulted in the cancellation of some or all claims in the patent under review. Cuozzo argues that the high cancellation rate is because, although IPR was expressly designed to be a surrogate for litigation, the Board does not use the same claim construction standard as federal courts. Federal courts are required to construe the claim in an issued patent according to its plain and ordinary meaning. In contrast, the Board now gives the claim its broadest reasonable interpretation, which is the protocol used by examiners reviewing patent applications.
It is becoming commonplace for a party sued for patent infringement in a federal district court to select IPRs as both a cost effective and efficient alternative to district court litigation. The Supreme Court's ruling in Cuozzo will likely determine who wins in IPRs. Given the fact that currently IPRs are viewed very unfavorably by patent owners, this decision could alter the landscape and dissuade patent infringement cases.
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John Connors discussing with his Congressional representative, Dana Rohrabacher, American Invents Act
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LIMITATIONS ON JUDICIAL REVIEW
Congress in the America Invents Act (AIA) mandated that the PTO's decision "whether to institute an inter partes review under this section shall be final and nonappealable." 35 U.S.C. ยง 314(d). In deciding Cuozzo, the Federal Circuit held that the statute precluded both an immediate appeal from a decision to institute an IPR and also the review of the final PTO decision.
If the Court's resolves this question in favor of Cuozzo and holds that Section 314(d) bars only immediate (or interlocutory) appeals of PTO institution decisions, but does not preclude review of those decisions after the agency issues a final determination of patentability, such a holding would provide additional grounds for patent holders to challenge unfavorable IPR decisions.
WHAT HAPPENS IF THE COURT ISSUES A SPLIT DECISION IN CUOZZO
With the recent death of Justice Antonin Scalia the court now consists of only eight Justices. Consequently, it is conceivable that this case could produce a split decision (4-4 tie). A split decision effectively upholds the ruling of the court below and the court would typically issue a per curiam decision. Interestingly, the justices may attach dissenting opinions to the decision.
When a split decision occurs, the case is not deemed to have set any sort of precedent.
Or, in the alternative, the Supreme Court could remand the case back to the CAFC below. However, if the Supreme Court remands the case back to the CAFC, generally the Supreme Court will define the parameters of the actions expected of the CAFC, to which this case has been remanded, e.g. "remanded with instructions."
The pleadings, motions and papers (including Briefs) can be found at
http://www.scotusblog.com/case-files/cases/cuozzo-speed-technologies-llc-v-lee/
For more news and information in regards to patent law, call us at 951-395-9910 or visit our website below.
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