AIA Blog

DISCLAIMER: This blog provides updates and information about various AIA related issues. However, for complete information on the requirements for a particular type of AIA filing, please consult the relevant statute and rules for the respective AIA provision.

Monday Jul 07, 2014

USPTO Seeking Written Comments on Virtual Marking for AIA Report

The AIA requires the USPTO to report on the effectiveness of virtual marking as an alternative to physically marking articles with patent information.  The AIA contained a provision permitting a virtual mark as a means of providing public notice that an article is subject to patent protection in lieu of a physical mark on the patented article.  The AIA mandates the USPTO to complete the report for Congress by September 16, 2014.

To fulfill its AIA reporting requirement, the Office is seeking public comment on specific aspects of virtual marking:

  •  whether virtual marking is effective for giving public notice;
  •  whether virtual marking has limited or improved the public’s ability to access patent information;
  •  whether and what legal issues arise from virtual marking; and
  •  whether virtual marking has any deficiencies. 

Comments on these topics, along with any other issues or experiences regarding virtual marking, may be emailed to by July 16, 2014.  More information about the Virtual Marking Report is available here = 

Monday May 05, 2014

USPTO Message From PTAB: How to Make Successful Claim Amendments in an AIA Trial Proceeding

In an AIA trial proceeding, such as an inter partes review (IPR), post-grant review (PGR), or a covered business method patent review (CBM), a patent owner may move to amend the claims of the challenged patent.  The patent owner should not, however, approach the amendment process in an AIA trial proceeding like the amendment process to overcome an Office rejection filed during the prosecution of a patent application or during a reexamination or reissue proceeding. 

During the prosecution of a patent application or during a reexamination or reissue proceeding, an applicant has a right to amend claims prior to a final Office action.  Once an amendment is made, the burden then falls on the Examiner to show that the amended claims are unpatentable.  In doing so, the Examiner undertakes a further prior art search, taking into account the added limitations.  These aspects are different in an IPR, PGR, or CBM proceeding.

First, per the statute, a patent owner in an IPR, PGR, or CBM proceeding only may “move” to amend the claims.  The proposed amendment is not entered automatically as it would be during prosecution of a patent application or during a reexamination or reissue proceeding.

Second, the patent owner in an IPR, PGR, or CBM proceeding bears the burden to show that the proposed substitute claims are patentable.  The statute prescribes that the patent owner must move to amend the claims, and in so doing, as the moving party bears the burden to show entitlement to the relief requested by motion.  An applicant bears no such burden during the prosecution of a patent application.  Likewise, a patent owner bears no such burden due a reexamination or resissue proceeding.  Rather, the Examiner has the burden to establish the unpatentability of any claim during examination, reexamination, and reissue.   

Finally, the Board in an IPR, PGR, or CBM proceeding conducts no prior art search and performs no examination.  Instead, the Board’s grant of a motion to amend operates to add the proposed substitute claims directly to an issued patent without a search or examination. 

To succeed on a motion to amend in an IPR, PGR, or CBM proceeding given these distinguishing aspects, a patent owner should, with respect to each claim feature added by amendment, discuss what it knows what was previously known about the feature and about the level of ordinary skill in the art.  A patent owner does not need to address individually all the items of prior art known to the patent owner.  Nor does a patent owner need to address all of the prior art in existence at the time of filing.  Rather, the patent owner should explain why the claim feature added by amendment, in combination with all the other features of the claim, would not have been obvious to a person of ordinary skill in the art at the time of the invention, in light of the knowledge and skill level of the person of ordinary skill in the art.

Additionally, a patent owner must be mindful that it is not sufficient to establish that its amended claims are patentable over the prior art applied by the petitioner.  The petitioner did not select the prior art identified in the petition with knowledge of patent owner’s proposed substitute claims.  In fact, the references applied by the petitioner reasonably are not expected to be the closest prior art regarding the added feature in the amended claims.  Thus, while it is necessary for the patent owner to distinguish its amended claims over the prior art applied by the petitioner, a patent owner should not limit its motion to amend to that art.  Demonstrating patentable distinction over the prior art applied by the petitioner does not establish the overall patentability of the proposed claims sufficient to have them added to the involved patent.

Finally, a statement by the patent owner that the closest prior art it knows about was applied by the petitioner in the petition can be helpful if the supporting basis is explained in and established by the motion to amend.  A conclusory statement to this effect would be of questionable value because its meaning depends on the patent owner’s subjective focus when making the statement. 

Monday Feb 24, 2014

Message From Administrative Patent Judges Sheridan Snedden And Jacqueline Bonilla: Deep Dive Into A Patent Owner Preliminary Response In An Inter Partes Review Proceeding Before The Patent Trial And Appeal Board

Inter partes review (IPR) proceeding provides an opportunity to challenge the patentability of claims in an issued patent for anticipation or obviousness under 35 U.S.C. §§ 102 and 103, respectively, based on prior art patents or printed publications.  An IPR proceeding is conducted before the Patent Trial and Appeal Board and is divided into two stages:  (i) a preliminary stage; and (ii) a trial stage.  The preliminary stage begins with the filing of a petition to institute a trial.  To proceed to the trial stage, a petition must demonstrate that there is a reasonable likelihood that the petitioner would prevail as to at least one of the challenged claims.  A patent owner has a waivable right to file a preliminary response to the petition setting forth reasons why trial should not be instituted.  The preliminary stage ends with a decision from the Board on whether to institute a trial. 

A preliminary response provides a patent owner with an opportunity to be heard before the Board decides whether to institute trial.  If the petition does not meet the standard set for instituting a trial, the petition will be denied, regardless of a preliminary response.  That said, a preliminary response may help the Board when deciding whether to institute a trial.  To provide the most benefit, a preliminary response should identify clear procedural and substantive reasons why the petition should be denied.  To follow is a discussion of potential arguments that a patent owner might raise in a preliminary response, if appropriate, to help the Board’s consideration. 

Petitioner Is Statutorily Barred from Pursuing an IPR

A preliminary response may challenge the standing of a petitioner under 35 U.S.C. 315. 

Under 35 U.S.C. 315(a)(1), a patent owner may provide evidence that the petitioner filed a civil action challenging the validity of a claim of the patent, e.g., in a declaratory judgment action in district court, prior to filing the petition.  Such action by the petitioner bars the institution of an IPR under 35 U.S.C. § 315(a)(1).  Board decisions providing guidance on the application of § 315(a)(1) include the following:

  • Anova Food, LLC v. Sandau, IPR2013-00114, Paper No. 17 (PTAB) (a civil action for a declaratory judgment dismissed with prejudice filed by a predecessor-in-interest to the petitioner bars an IPR under § 315(a)(1)).
  • Cyanotech Corporation v. The Board Of Trustees of the University of Illinois, IPR2013-00401, Paper No. 30 (PTAB) (a civil action involuntarily dismissed without prejudice does not bar an IPR under § 315(a)(1)).
  • Clio v. The Procter and Gamble Co., IPR2013-00438, Paper No. 9 (PTAB) (a civil action voluntarily dismissed without prejudice does not bar an IPR under § 315(a)(1)).
  • Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper No. 24 (PTAB) (a civil action for a declaratory judgment of non-infringement is not a civil action challenging the validity of a patent barring an IPR under § 315(a)(1)).

Alternatively, a patent owner may provide evidence that the petitioner is barred from challenging the patent owner’s claims under 35 U.S.C. § 315(b).  As outlined in § 315(b), the Board may not institute an IPR if the petition was filed more than one year after the petitioner, real party in interest, or a privy, was served with an infringement complaint.  Board decisions providing guidance on the application of § 315(b) include the following:

  • Macauto U.S.A. v. BOS GmbH & KG, IPR2012-00004, Paper No. 18 (PTAB) (a dismissal without prejudice nullifies the effect of service for purposes of § 315(b)).
  • St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., IPR2013-00258, Paper No. 29 (PTAB) (a counterclaim is a “complaint alleging infringement of the patent” within the meaning of § 315(b)).
  • Accord Healthcare v. Eli Lilly and Co., IPR2013-00356, Paper No. 13 (PTAB) (service of a second complaint does not nullify the effect of a first served complaint for purposes of § 315(b)).
  • BioDelivery Sciences Int’l, Inc. v. MonoSol RX, LLC, IPR2013-00315, Paper No. 31 (PTAB) (challenged claims amended by a reexamination certificate issued after service of the complaint does not affect the “date on which the petitioner . . . is served with a complaint alleging infringement of the patent” under § 315(b)). 

Highlight Weaknesses in Petitioner’s Case of Unpatentability

The Board may not authorize a trial where the information presented in the petition fails to meet the requisite standard for instituting a trial—that is, fails to establish a reasonable likelihood that the petitioner would prevail with respect to at least one of the challenged claim.  35 U.S.C. § 314(a).  Thus, it is helpful to the Board if a preliminary response explains carefully the weakest parts of petitioner’s unpatentability positions.  For example, the preliminary response may include a detailed discussion or technical analysis relating to:

  • How any asserted references are not, in fact, prior art;
  • How asserted references lack at least one material limitation in one or more challenged claims; or
  • How an asserted reference teaches away from a combination of elements, as advocated by petitioner.  See, e.g., Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., IPR2013-00132, Paper No. 9 (PTAB). 

Petitioner’s Claim Construction is Improper

In an IPR proceeding, the Board construes claim terms according to their broadest reasonable construction in light of the specification of the patent in which they appear.  37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide (“Trial Practice Guide”), 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012).  Using this standard, a preliminary response may help the Board by carefully explaining claim construction positions.  The patent owner may wish to point to the specification, dictionary definitions, as well as logic in relation to the claims as a whole, to support a conclusion that petitioner’s claim construction is, for example, unreasonably broad.  In interpreting claims, however, one must take care to note the fine line between interpreting claims in light of the specification and improperly reading limitations into the claims from the specification.  Absent claim language carrying a clear narrow meaning, the Board will not limit a claim based on the specification unless it expressly disclaims the broader definition.  See, e.g., Ariosa Diagnostics, Inc. v. Verinata Health, Inc., IPR2013-00277, Paper No. 10 (PTAB).

Petition Contains Prior Art or Arguments Were Previously Presented to the Office.

Under 35 U.S.C. § 325(d), a preliminary response may wish to address whether the same or substantially the same prior art and arguments were previously presented to the Office.  Board decisions providing guidance on the application of § 325(d) include the following:

  • SAS Institute, Inc. v. Complementsoft, LLC, IPR2013-00581, Paper No. 15 (PTAB) (denying a petition as to grounds based upon substantially the same prior art and arguments as set forth in a prior IPR petition).
  • Oracle Corporation v. Clouding IP, LLC, IPR2013-00100, Paper No. 8 (PTAB) (granting a petition where new arguments and supporting evidence were presented that shed a different light on references previously considered during prosecution).

Petition Fails To Identify All Real Parties-in-Interest

Under 35 U.S.C. § 312(a)(2) and 37 CFR § 42.8, an IPR petition must identify all real parties-in-interest or privies.  A preliminary response may help the Board by pointing out how the petition fails to identify all real parties-in-interest.  The Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party-in-interest.  Whether a non-party is a “real party-in-interest” or “privy” is a “highly fact-dependent question” that takes into account how courts have used the phrases generally to “describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion.”  Trial Practice Guide, 77 Fed. Reg. at 48759.  One consideration is whether a non-party exercises, or could have exercised, control over a petitioner’s participation in an IPR proceeding.  Id. at 48759-60, 48695.  Other considerations may include whether a non-party, in conjunction with control, funds and directs the proceeding.  Id. at 48760.  Board decisions providing guidance on real party-in-interest or privy include the following:

  • Butamax™  Advanced Biofuels LLC v. Gevo, Inc., IPR2013-00214, Paper No. 11 (PTAB)(“‘common interest among litigation defendants seeking to invalidate or defend against enforcement of a patent . . . does not translate ipso facto into each defendant being a real party in interest where a request for reexamination is filed by only one of the defendants in the litigation’”) (citations omitted). 
  • Chimei Innolux Corporation v. Semiconductor Energy Laboratory Co., Ltd., IPR2013-00068, Paper No. 7 (PTAB) (patent owner failed to provide persuasive evidence that each co-defendant in a related litigation exercised control and provided funding of the IPR petition).

Supporting Evidence for the Preliminary Response

The preliminary response may cite evidence supporting the patent owner’s contentions.  Such evidence may include previously existing declarations, trial testimony, deposition testimony, and expert reports.  A preliminary response may not, however, present new testimonial evidence (i.e., testimonial evidence prepared specifically for the purpose of the IPR proceeding) without authorization from the Board.  Additionally, flooding the Board with evidence in a preliminary response is not helpful.  Rather, a preliminary response should aid the Board in navigating evidence of record cleanly and quickly.  

Thursday Dec 05, 2013

Message From Janet Gongola, Patent Reform Coordinator: Request for Public Comments on Methods to Study Diversity of Patent Applicants

The America Invents Act requires the USPTO to establish methods for studying the diversity of patent applicants.  In March 2012, the USPTO mapped out an step-wise approach for doing so.   As a first step, we shared our public USPTO patent data with the Census Bureau to obtain demographic information for patent applicants who previously filed applications with the Office during a select time period.

Now, as a second step, the agency is seeking public feedback about how effective different approaches would be for collecting diversity information from patent applicants in the future and what information would be appropriate to collect.  Written comments are due by January 31, 2014.  To read the USPTO’s full request for information, including how to provide comments, click here.

Once the agency has reviewed all input collected from the first match with Census data and the request for information, we will decide what further steps to take to be able to accurately describe patent applicant diversity information consist with the AIA.;

Saturday Aug 25, 2012

USPTO to Host Preview of New Electronic Filing System for New Administrative Trials

From Janet Gongola, Patent Reform Coordinator:

The USPTO will preview its new electronic filing system, called the Patent Review Processing System (PRPS), to be used for making filings in connection with the new administrative trials of inter partes review, post grant review, and covered business method review that become available on September 16, 2012.  The preview will take place on Thursday, September 6, 2012, from 10 am to noon Eastern Daylight Time at the Alexandria campus in the Madison North Auditorium.  The preview also will be webcast.

WebEx Access Information:

Event number: 991 880 392
Event password: 123456
Event address for attendees:

At the preview, representatives from the Patent Trial and Appeal Board will demonstrate the system, including how to register to use the system, to file a petition seeking a trial, to pay petition fees, to join the proceeding as a patent owner, and to file motions and other documents.  The preview will be helpful for any practitioners or administrative personnel who anticipate filing documents in the new proceedings.  There will also be an opportunity to ask questions for in-person and webcast participants. WebEx participants will be able to submit questions through the WebEx chat session.

Friday Jun 29, 2012

USPTO Testifies Before Senate Judiciary Committee on AIA Implementation

From Director David Kappos:

On Wednesday, June 20, 2012, I testified before the Senate Judiciary Committee about the agency's implementation of the AIA.  This was the second Congressional oversight hearing directed to AIA implementation since the new legislation was signed into law.  Previously, on May 16, 2012, I testified before the House Judiciary Committee about our AIA implementation activities.

In brief, I informed the Senate Judiciary Committee that the agency remains on track to issue final rules for various new provisions that go into effect on September 16, 2012, and is actively preparing proposed fees rule following two fee setting hearings held in February 2012.  I also informed the Committee that the agency has successfully implemented other provisions including (i) prioritized examination for which over 4000 applications have been received, over 2300 first Office actions have been issued, and 200 patents have granted; (ii)  the pro bono program, which started in Minneapolis/St. Paul and is now operational in Denver with plans to expand to 4 additional areas by the end of the calendar year; and (iii) the satellite office program with the first office opening in Detroit in July and additional office locations to be announced later this summer.  All of the agency's implementation activities energize international harmonization efforts, as I discussed at the end of my testimony.

A copy of my testimony along with a webcast of the hearing before the Senate Judiciary Committee is available via the links below.  I invite you to review them for even more information about our AIA implementation activities and international harmonization.

Friday May 18, 2012

USPTO Testifies Before Congress About AIA Implementation

From: Director David Kappos

On Wednesday, May 16, 2012, the House Committee on the Judiciary held a hearing on the USPTO’s implementation of the AIA, the first oversight hearing on this historic legislation.  I testified along with six others representing various companies and intellectual property law associations.  You can view a webcast of the complete hearing along with my testimony here:

Hearing Webcast
AIA Testimony

I am pleased to share a brief synopsis of my testimony.  The agency has completed implementation of 7 provisions in the AIA and currently is working to implement 9 additional provisions.  To that end, we are reviewing more than 350 public comments, making modifications to the proposed rules in response thereto, and preparing to issue final rules no later than August 16, 2012.  Additionally, the agency has completed 2 studies—an analysis of the prior user rights defense and a report on international patent protection for small businesses—and will soon be delivering a report about genetic testing to Congress in mid-June 2012.  Lastly, the pro bono program has been launched in Minneapolis/St. Paul and Denver, and our first satellite office will open this summer in Detroit.  I look forward to continuing opportunities to share the progress of our AIA implementation activities with Congress and our stakeholders in the coming months.

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