By Scott A. McKeown
| October 30, 2014
PTAB

Rehearing Requests & CAFC Remands to Tax PTAB Resources

As discussed on Tuesday, sometimes the Court of Appeal for the Federal Circuit (CAFC) will find it necessary to remand an appeal to the Patent Trial & Appeal Board (PTAB). Likewise, sometimes the Solicitor will seek remand in appropriate circumstances. Historically remand occurs in about 10-15% of appeals from the agency on a yearly basis (sometimes less). In any given year this meant only a handful of cases required "re-work" from the PTAB as the number of appeals from the PTAB to the CAFC was relatively modest.

As to requests for rehearing, the Board sees some volume of requests in patent reexamination proceedings, especially inter partes reexamination. Yet, given the lengthy pendency of such reexamination proceedings, a fair amount of these appeals are avoided. Or, are at least not as hotly contested after the the requesting party settles, which was common. 

Thanks to the wildly popular post-grant patent challenge mechanisms of the America Invents Act (AIA), all of that is about to change.

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By Scott A. McKeown
| October 28, 2014

CAFC Cites Inconsistencies in Reexamination Appeal Ruling

Back in June, the Court of Appeals for the Federal Circuit (CAFC) decided Q. I. Press Controls, B.V.,v. Quad/Tech, Inc. (here) The appeal stemmed from an inter partes reexamination of U.S. patent 6,867,423 (95/000,526). Of particular interest in the appeal from the Patent Trial & Appeal Board (PTAB) was the allowance of claims 1-60 in view of the rejection of claims 61-72. That is the Board rejected claims 61-72 on a combination of references never applied to claims 1-60, but, the allowed claims (1-60) and rejected claims (61-72) only differed in minor respects.

On appeal, the requester raised this inconsistency with the CAFC and cried foul (despite never having raised the potential rejection formally for claims 1-60). In reversing the Board, the CAFC stated that the combination must be applied to claims 1-60 as a new rejection under 37 C.F.R. § 41.77(b). In doing so, the CAFC opinion could be interpreted to suggest that a new rejection under 41.77 was no longer discretionary, but mandatory.  

The PTO took issue with this aspect of the opinion. Earlier this month, the CAFC declined the PTO's rehearing request directed to this concern.

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By Scott A. McKeown
| October 22, 2014
PTAB issue joinder

Debate Over Issue Joinder Continues


Back in September, the Patent Trial & Appeal Board (PTAB) issued a rare expanded panel Order in Target Corp. v. Destination Maternity Corp., (IPR2014-00508) (here). In the Order, a divided panel denied issue joinder under 35 U.S.C. § 315(c) as a matter of law (i.e., the joining of two petitions of a same petitioning party). The decision was especially surprising given the fact that 315(c) had been previously interpreted by the PTAB as permitting such joinder practices. In fact, one such decision Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper 17, Dec. 21, 2012 is published on the PTO web site as a representative order.

Since the decision in Target, rehearing has been requested, and other petitioners have begun to assail the PTAB's perceived change in course on the matter of issue joinder.
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By Scott A. McKeown
| October 20, 2014

PTAB to Report on State-of-the-Board This Week

The PTAB is holding a two-day, all hands meeting this Tuesday and Wednesday (October 21-22). The PTAB will Webcast for the public the State-of-the-Board Address by Chief Administrative Patent Judge James Donald Smith on Tuesday morning at 10:45 – 11:15 a.m. Webcast information (here)
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By Scott A. McKeown
| October 17, 2014

Free Webinar Series — October


Just a reminder that this month's edition of the PatentsPostGrant.com free webinar series will be held next Thursday October 23rd @12:30 (est). The October webinar is entitled:

Preparing for War: PTAB Impact on Bio/Pharma Disputes. (speakers: Richard Kelly, Dianna Devore Ph.D & Scott McKeown).
Register (HERE).

The formal portion of the webinar will begin at 12:30 Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period. To attend the webinar please sign up via the link above. You will receive a registration confirmation email immediately. One hour prior to the webinar you'll receive another email with a link and instructions for joining the presentation. VA CLE credit will be provided.

We look forward to speaking with you during the webinar.
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