SCOTUS to Decide Whether the U.S. Government Is a “Person” Who may Petition to Institute Review Proceedings Under the AIA

The Supreme Court of the United States, on October 26, 2018, granted certiorari in Return Mail Inc. v. United States Postal Service, to address Question 1 of the petition: whether the U.S. government is a “person” who may petition for AIA review of issued patents without facing the estoppel consequences that apply to private parties.  The Federal Circuit answered the question in the affirmative in its 2-1 decision.  The Supreme Court, however, declined to take up Question 2 raised in the petition: “whether a § 1498(a) action for the eminent domain taking of a patent license by the government is a suit for patent ‘infringement’ under the AIA.”

USPTO Seeks Input on Its Proposed Pilot Program on the New Amendment Process

On October 29, 2018, The USPTO published several proposed practices and procedures for public comments. Specifically, the USPTO is seeking input on a proposed pilot program to make amending claims before the PTAB easier.  This amendment process would involve a preliminary non-binding decision by the Patent Trial and Appeal Board (“PTAB”) regarding merits of a motion to amend filed in inter partes review (“IPR”), post-grant review (“PGR”), or covered business method patent reviews (”CBM”), and provide an opportunity for a patent owner to revise its motion to amend accordingly.  The comment deadline is December 14, 2018.

PTAB Will Apply a New Claim Construction Standard For Trial Proceedings

As a result of the Supreme Court’s approval of the USPTO’s ability to choose its own claim construction approach for AIA proceedings in Cuozzo Speed Techs., LLC v. Lees, 136 S. Ct. 2131 (2016), the agency has recently adopted a new claim construction standard for interpreting claims in IPR, PGR, and CBM proceedings before the PTAB.  The USPTO is replacing the broadest reasonable interpretation (“BRI”) standard with the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (the Phillips standard).  As such, the PTAB will be using the same claim construction standard applied in federal courts to construe patent claims.  This final rule will take effect on November 13, 2018.