Another Day, Another New PTAB Rule

Jennifer Chagnon, director in Sterne Kessler’s Electronics Practice Group, spoke to IAM regarding the recent announcements from the Patent Trial and Appeal Board (PTAB) of return to in-person hearings and changes to inter partes reviews.

On September 1^st, the U.S. Patent and Trademark Office (USPTO) will mandate that all PTAB hearings return to be in person, with requests for virtual hearings limited to financial hardship, medical emergencies, or similar circumstances. USPTO Acting Director Coke Morgan Stewart then issued a memo limiting reliance on applicant-admitted prior art and “general knowledge” in inter partes reviews, also effective September 1^st.

The memo has called for a strict enforcement of Rule 104(b), which states that “applicant admitted prior art, expert testimony, common sense, and other evidence (collectively, general knowledge) that is not “prior art consisting of patents or printed publications” to supply a missing claim limitation.”

Chagnon commented on the implementation of Rule 104(b), “Parties will also have limited opportunity to challenge this application of Rule 104(b) since its application is most likely to be imposed at the institution state, where denials of institution based upon strict application of this rule are not appealable.”

Chagnon explained how petitioners may move forward with the changes, “Petitioners can avoid issues with this change in procedure by ensuring each element of the challenged claims is taught or suggested by the prior art and printed publications relied on in their petition.”

She continued, “In the majority of cases at the PTAB, petitioners already rely exclusively on prior art patents or printed publications for teaching all elements of the claims. On the margins, where a petitioner may have previously relied on applicant-admitted prior art, if something is truly well-known, they should likely be able to find a patent or printed publication including such a teaching and now simply must do so in order to be in compliance with Rule 104(b).”