Christmas (Tree Patents) In July

It’s the week of the Fourth of July and that means that it’s time to talk about Christmas trees.  Or at least about patents for creating an electric connection between different sections of artificial trees.

In a pair of decisions yesterday [1][2], both dealing with a dispute between two companies over artificial Christmas trees, the Federal Circuit reversed the Patent Trial and Appeal Board’s determinations.  In each case, the Federal Circuit found that the PTAB had applied an overly demanding standard in reaching a decision that the claims were not obvious.

In one case, the PTAB decided that an ordinary engineer wouldn’t have considered substituting a press-fit connector in place of a snap-fit connector.  This led the PTAB to find the claims valid. The Federal Circuit disagreed, finding that it would have been obvious to make that substitution, and sent it back to the PTAB for further consideration in light of that determination.

In the other case, the PTAB only considered a portion of the evidence presented by the petitioner.  The Federal Circuit rejected the PTAB’s decision not to consider the entirety of the evidence and again returned the case to the PTAB for further consideration.

Seeing the Forest

In both cases, the PTAB appears to have been gun-shy of invalidating patent claims, even in the face of persuasive evidence to the contrary.  This is consistent with a broader trend at the PTAB. While any given month may have a variety of outcomes, the PTAB has become more likely to uphold a flawed patent claim.  The graph below, prepared from the PTAB’s official statistics, illustrates this trend:

Since PTO Director Iancu’s confirmation in 2018, outcomes in final written decisions have trended towards finding a higher percentage of claims valid and a lower percentage of claims invalid.  Some of this change is undoubtedly due to the effects of the SAS decision, which can require institution on claims that are unlikely to be invalidated. However, that decision happened alongside Director Iancu’s characterization of recent changes to patent law as an “over-correction.” The Director has also led the Patent Office to make a number of changes that tilt AIA trials in favor of patent owners.

Between the substantive changes and Director Iancu’s rhetoric, PTAB judges may have seen the writing on the wall and begun to shift their decision-making processes towards allowing questionable patents to survive.

Joshua Landau

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

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