USPTO flexing its muscles as to changes in IPR proceedings?
A Washington Post story suggests the USPTO wants to control "how" the IPR process
might be changed:
The USPTO's latest data show that the IPR process is tremendously successful at getting patents invalidated: Of all patent claims to be challenged so far under IPR, nearly a quarter have been ruled unpatentable by the patent office. What you make of this figure depends on whose interests you represent: The manufacturing, biotech and pharmaceutical industries find it alarmingly high and a potential risk to future technological advances. By contrast, many in Silicon Valley view it as evidence that the patent office approved way too many "bad" patents in the past that should never have made it out the door. And now, these patent claims are being swept off the table, reducing ammunition for patent trolls.
In a blog post proposing changes to the IPR process, the USPTO last week said its review decisions have been upheld by a federal appeals court at "a very high rate" — suggesting that they've made the right calls in each IPR case.
Biotech and pharmaceutical patents also account for a tiny share — about 9 percent — of all the petitions made under IPR and similar mechanisms. The vast majority are in the "electrical/computer technology" sector, about 63 percent.
"We recognize that, while we believe the proceedings are working well, there are improvements that could be made based on our and the public’s experiences with the proceedings," USPTO Director Michelle Lee wrote in a blog post last week.
The proposed changes give patent holders some new benefits (such as the ability to respond to a request for review with their own evidence arguing against an investigation).
On Tuesday, the USPTO also announced a request for public comments on a proposal to switch up how IPR proceedings are initiated. The current system has a three-judge panel at the agency decide whether to start a review, then uses the same judges to conduct it. Under the proposed change, only one judge would be responsible for launching the process. That judge would then be joined by two fresh judges who weren't involved in the initial decision.
These changes, if approved, could alter how the IPR process works. But more importantly, some tech industry officials say, it sends the message that the USPTO is capable of making decisions to improve the IPR process on its own, and that it doesn't need Congress to write new rules laying out how IPR should work.
**To understand the high rate of affirmance by the CAFC of PTAB decisions, one should note the standards of review.
The Finnegan website notes:
the Federal Circuit applies the deferential "substantial evidence" test to the PTAB's anticipation and written-description determinations, which are both questions of fact. In contrast, the Federal Circuit reviews questions of law—including enablement, obviousness, indefiniteness, and patentable subject matter—under a de novo standard, without deference. At the same time, the PTAB's underlying factual findings with respect to obviousness and enablement are reviewed under the more deferential "substantial evidence" standard.
Evidence is substantial “if a reasonable mind might accept it as adequate to support the finding.” The reviewing court might not agree with the determination, but will affirm it if there is substantial evidence. Further, as to error by PTAB, the appellant must show the error was harmful: “appellant must not only show
the existence of error, but also show that the error was
in fact harmful because it affected the decision
A petitioner may not appeal a decision not to institute an IPR proceeding (as happened in the Kyle Bass/Acorda matter over patent claims to the MS drug Ampyra). See In re Dominion Dealer Solutions, LLC., 2014 WL 1673823, *1 (Fed. Cir. Apr. 24, 2014).