Upcoming Post-Grant CLEThe PatentsPostGrant.com free monthly webinar series will resume in March. For more comprehensive CLE programs, there are a number of marquee programs on the immediate horizon.
First up is this week's Utah IP Summit (Friday, February 27th), topics include Surviving PTAB Review & Insulating Your Patent Portfolio.
Last, but certainly not least, is the most widely attended post-grant program of the year, Practicing Law Institute's USPTO Post-Grant Patent Trials 2015. I am happy to return as chair of this program along with Rob Greene Sterne of Stern Kessler Goldstein & Fox. These programs are always the highlights of the CLE year. (Register here)
Mar. 26, 2015 New York, NY
Apr. 17, 2015 San Francisco, CA (webcast available)
Hope to see you at one of these upcoming programs.
Agency Discretion Dictated by Petitioner Joinder RationaleAs discussed previously, in Target Corp. v. Destination Maternity Corp (IPR2014-00508) a divided PTAB panel permitted issue joinder. While the dissent argued that acceptance of issue joinder might permit a proverbial "second bite at the apple," the majority countered that such gamesmanshp could be thwarted by judicious use of agency discretion.
It seems the PTAB agrees, as demonstrated recently in Amneal Pharmaceuticals LLC. v. Endo Pharmaceuticals Inc. (IPR2014-01365, Paper 13, February 4, 2015).
Issue Joinder within Statute, Matter of Agency DiscretionAt the outset of this year, I explained how Target Corp. v. Destination Maternity Corp (IPR2014-00508) was one of five Patent Trial & Appeal Board (PTAB) decisions that changed post-grant trial practice in 2014. Target was notable because it was a significant departure from previous PTAB practice. That is, up until Target, a same petitioner was able to join a first-filed petition with a later filed, second petition (i.e., "issue joinder). The Target decision found issue joinder outside of the statutory authority granted by 35 U.S.C. § 315(c). cf. Microsoft Corp. v. Proxyconn, Inc., (IPR2013-00109, Feb. 25, 2013)
In Target, as in Microsoft, the petitioner filed a second petition outside of their 12-month window to attack a claim that was excluded from the Trial Order of an earlier, timely filed petition (argued as being necessitated by the patentee's failure to provide requested materials in litigation discovery). Since joinder is a codified exception to the 12-month window, absent issue joinder, the claim could not be attacked with a second "stand-alone" petition. The Target majority denied issue joinder back on the basis that § 315(c) is directed solely to joinder of parties.
A Request for Rehearing was filed in November of 2014 challenging the Target Decision. Today, the PTAB issued a second expanded panel decision reversing the 2014 decision.
Hearing to Assess Developments in Supreme Court Case LawOn the heels of last week's re-introduction of the Goodlatte bill (now, recast as H.R. 9) At 1PM today, the House Judiciary Committee will hold a hearing, entitled Examining Recent Supreme Court Cases in the Patent Arena. A list of speakers is provided below along with a copy of their prepared testimony.
Mr. Herbert C. Wamsley
Intellectual Property Owners Association
Mr. Krish Gupta
Senior Vice President & Deputy General Counsel
Mr. Andrew J. Pincus
Mayer Brown LLP
Mr. Robert P. Taylor
National Venture Capital Association