2018 Annual Meeting
In This Section
The Annual Meeting had a strong line-up of keynote speakers this year, however the one must-attend speech was Thursday, October 25, 2018 luncheon speaker, USPTO Director Andrei Iancu.
Iancu only took on the role in February 2018 but has been busy making a raft of changes at the Office as well as making headlines with his speeches. At the IPO’s Annual Meeting last month, Iancu made waves by promising new Section 101 guidance to help get patentable subject matter eligibility out of a “rut”.
He also had some strong words to share on the issue of patent trolls, at the Eastern District of Texas Bar Association Inaugural Texas Dinner. Iancu said: “For many years now the dialogue surrounding IP has devolved into a discussion about – shall we say – scary monsters? You know, the green creatures that dwell under bridges or lurk in the forests and are poised to terrorize anyone who dares take the risk of venturing out into the innovation ecosystem.”
He added: “Remarkably, in what I believe amounts to Orwellian ‘doublespeak,’ those who’ve been advancing the patent troll narrative argue that they do so because they are actually pro-innovation. That by their highlighting, relentlessly, the dangers in the patent system, they actually encourage innovation. Right!” Iancu concluded: “Repeatedly telling ‘patent troll’ stories is indeed odd, especially when they’re being told to the people who have been responsible for the greatest advances in human history. The narrative must change. And, at least as far as the USPTO is concerned, it has now changed. We are now focusing on the brilliance of inventors, the excitement of invention, and the incredible benefits they bring to all Americans and to the world.”
Director Iancu also made news at the Annual Meeting, announcing a new claim amendment procedure at the Patent Trial and Appeal Board. The USPTO has made some big changes to PTAB practice in recent months. It updated the Trial Practice Guide in August, published two new Standard Operating Procedures (SOPs) in September, and published a final rule on the claim construction standard in October. “And in just a few days, we will formally publish a proposal for an updated claim amendment procedure in AIA trials,” said Iancu.
Claim amendments have been rare. They are filed in less than 10% of AIA trials, and granted or granted in part in only 10% of motions that are ruled on. “I believe that the current amendment process in AIA proceedings is not working as intended,” said Iancu. He said the amendment process should allow the patent owner a meaningful opportunity to draft narrower claims. The proposed amendment process would involve a motion filed by the patent owner within six weeks of institution, an opposition by the petitioner within another six weeks, a preliminary nonbinding decision by the Board one month later, and the opportunity for the patent owner to revise the amended claims in light of this preliminary decision. “This preliminary decision would provide valuable insight to both parties regarding the merits of the motion to amend,” said Iancu.
The USPTO will seek public comments before finalizing the new procedure. “And so, with the newly updated trial practice guide, the new standard operating procedures, the claim construction standard newly aligned with federal courts, and a robust new amendment process, it is indeed a new day at the PTAB!” declared Iancu. “I firmly believe that this combination brings more balance to the proceedings, and better aligns them with the original intent of the AIA legislation.”
Luncheon speaker Judge Kara Stoll of the Federal Circuit provided interesting insight into the Court’s views on Friday, October 26, 2018. The former Finnegan partner, who joined the Federal Circuit in 2015, spoke about her passage into public service. “In some ways it was an easy transition,” she told Lisa Jorgenson in an interview during the luncheon. “I didn’t have to worry about losing any cases and my clients always pay.”
But she says the sheer number of cases has been challenging. On the subject of rehearing petitions, Stoll raised a gripe. “For what it’s worth, I really think the court and the bar would be well served if there were more selective use of petitions for rehearing. Then the ones that are really deserving, exceptional issues of importance, would stand out a little more.”
Stoll observed that “occasionally, and maybe even often”, cases have a large time gap between when an appeal is filed and when oral argument is scheduled. “One thing I noticed was the delay wasn’t necessarily due to the court’s action,” she said. “We seemed to be keeping up, but in some cases counsel for both sides or just one side would identify months on end when they are not available for oral argument, and not necessarily explain why or give good cause.” She added: “It is something we are going to look into and something that is important to us because we want to keep up with our docket.”
Stoll discussed the number of issues that should be raised on appeal. The Federal Circuit has counseled for years that raising more than three issues can be difficult because of the limited amount of space in a brief and because weaker arguments can make stronger arguments appear weak. “We receive a number of appeals still where there are five or six issues raised, or the issues raised are questions of fact,” said Stoll. “For our review of PTAB appeals, the standard of review is substantial evidence. We see a lot of appeals where somebody is arguing that there isn’t substantial evidence to support a fact finding by the PTAB when in fact there is. So one thing that would behoove the bar would be to think about that substantial evidence standard and also think about legal issues.”
AIPLA Executive Director Jorgenson asked Stoll what distinguishes a good appellate lawyer from a great appellate lawyer. “It is really knowing the record well so that during oral argument you are faster with the record and the facts,” explained Stoll. At oral argument, the judges have already read the briefs and studied the relevant issues. They have to vote immediately after oral argument on the outcome of the case. “So a great attorney at oral argument really hears the question and answers with a yes or no and an explanation if necessary,” Stoll said. “They really know the record and the case law and are willing to make concessions, both in terms of what the facts are. But also if the attorney isn’t familiar with the particular case that you are asking about, it is better to admit you don’t know than to pretend you do.”
Stoll also gave some advice about writing briefs. She said that many briefs do not dig into the facts as much as necessary. One example of an error is saying a client should win because of a certain case and then just citing that case. A great brief would give the facts of the cited case and explain why the current case is just like it and why the court should rule the same way. “I am really surprised by the number of briefs that tackle the issues not at a level of depth that I need in order to be able to resolve the case,” said Stoll. “So I think that’s one thing that distinguishes a great brief from a good brief.”
The AIPLA Annual Meeting began in earnest on Thursday, October 25, 2018, with a very timely presentation during the Opening Plenary Session. Daniel Lee, Assistant US Trade Representative (Acting) for Innovation and Intellectual Property Office of the US Trade Representative (USTR), provided an overview of the United States-Mexico- Canada Agreement (USMCA), which was agreed in the very last few hours of September.
“I am happy to say that the IP chapter of the USMCA is the most robust IP chapter that USTR has ever negotiated,” said Lee. “It covers protection and enforcement across the IP spectrum, including trademarks, patents, trade secrets and copyright. The USMCA will raise the standard of IP protection and enforcement in Canada and Mexico. It also serves as a loud and clear signal to other countries as to what the United States expects for IP protection and enforcement.”
The USMCA includes many IP changes. “The real winners are US innovators and creators,” said Lee. The IP chapter includes provisions on biologics, trademarks, geographical indications, pharmaceutical patents, copyright and trade secrets.
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