By Scott A. McKeown
| March 6, 2017

Practical Impact of Joinder Practice, Stricter Estoppel


IPR estoppel is established under 35 U.S.C. § 315(e)(2), which provides that “the petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . may not assert . . . in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” (emphasis added).  Once upon a time, the reasonably could have raised component was thought to refer to art that could have been raised in the initial petition — at least, that was what Congress seemed to intend. Since that time, the Federal Circuit has made clear that this statutory estoppel is linked to the grounds presented at trial, and not those included in the petition and rejected by the Board as redundant. 

In Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016), the Court held that statutory estoppel does not apply to grounds denied by the Board as redundant.  The Court reasoned that estoppel cannot flow from grounds that are not part of the trial or any resulting decision from which estoppel can attach.

Rightly or wrongly, district courts have construed Shaw to extend to any potential trial ground not presented in the petition, not just those denied on redundancy grounds. This development has been a boon for original petitioners. But, a recent decision has made clear that petitioners seeking joinder may forfeit the Shaw estoppel benefits.

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By Scott A. McKeown
| February 24, 2017

Inaugural PTAB Bar Association Conference Coming to DC


Next week brings the now Sold Out, Inaugural PTAB Bar Conference. The PTAB Bar was founded to help establish best practices for this unique forum, foster communication among stakeholders and the PTAB, and aid practitioners in staying abreast of rule making, procedure and PTAB jurisprudential evolution. The Inaugural Conference of the PTAB Bar Association will be held March 1-3rd at the Ritz Carlton in Washington D.C. (here) The 3-day program offers a boot-camp for new practitioners on Wednesday March 1, followed by a full day program on Thursday, March 2nd, and a half day program on Friday, March 3rd.

Join the Organization to keep abreast of future event, meetings, practice updates and CLE. 

Also, next week, for practitioners handling ex parte appeals before the PTAB, AIA trials, or drafting claims to computer implemented inventions, the IPO Chat Channel will offer a timely review of emerging Board decisions on conditional claiming practices this Wednesday, March 1st, entitled: Ex Parte Schulhauser and Claim Drafting
for Computer-Implemented Inventions (register here)

For additional PTAB related events in March, see my earlier post on Spring CLE (here)

I hope to see you at one of these upcoming events.

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By Scott A. McKeown
| February 22, 2017

In re Packard Inextricably Linked to Patent Examination Practices?


Back in 2014, the Federal Circuit determined the standard for a USPTO indefiniteness analysis in In re Packard (here). This standard was more deferential to the agency as compared to the district court's "reasonable certainty" standard later enunciated in Nautilus v, Biosig Instruments Inc.  When Packard issued, I questioned whether that standard could be argued to apply to post-grant proceedings. This was because the Court's determination in Packard was deeply rooted in patent examination practices.

More recently, the Patent Trial & Appeal Board (PTAB) has adopted Packard in some of its decisions analyzing claims under 35 U.S.C. § 112 (e.g., PGR20015-00018, Telebrands Corp. v. Tinnus Enterprises LLC). But, decisions of the Federal Circuit since Packard, have made clear that grounds of unpatentability in AIA trial proceedings are not akin to rejections in patent examination.  As explained by the court in In re Magnum Oil Tools Int’l, Ltd. the prima facie procedural mechanisms of patent examination do not comport with proper AIA trial practices.

Will the CAFC pull the rug out from under the PTAB's application of Packard in AIA trails?

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By Scott A. McKeown
| February 10, 2017

Article III Standing for PTAB Appeals Once Again Revisited by Federal Circuit


Last month, the Federal Circuit made clear that Article III standing is necessary for petitioners to appeal from adverse decisions in AIA trial proceedings in Phigenix, Inc. v. ImmunoGen, Inc. (here)  The Phigenix decision follows an earlier decisionConsumer Watchdog v. Wisconsin Alumni Research Foundation (Warf) finding the same Article III standing requirement for the now defunct inter partes patent reexamination. 

Yesterday, in PPG Industries, Inc., v. Valspar Sourcing, Inc., the Federal Circuit again addressed the issue of standing in appeals from the Patent Trial and Appeal Board (PTAB). At issue in these consolidated appeals was whether PPG Industries, Inc. (“PPG”) had standing to appeal the PTAB’s decisions in two inter partes reexaminations where the patent owner Valspar Sourcing, Inc. (“Valspar”) was the prevailing party. Showcased in this appeal is evidence deemed to satisfy Article III standing for an appeal from the PTAB.
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By Scott A. McKeown
| February 9, 2017

Recalibration of Venue Could Change Face of Patent Litigation


As most are well aware, the patent venue statute, 28 U.S.C. § 1400(b), provides that patent infringement actions “may be brought in the judicial district where the defendant resides . . . .” The statute governing “[v]enue generally,” 28 U.S.C. § 1391, has long contained a subsection (c) that, where applicable, deems a corporate entity to reside in multiple judicial districts. In Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957), the Supreme Court held that §1400(b) is not to be supplemented by § 1391(c), and that as applied to corporate entities, the phrase “where the defendant resides” in § 1400(b) “mean[s] the state of incorporation only.” Id. at 226. The Court’s opinion concluded: “We hold that 28 U.S.C. §1400(b) is the sole and exclusive provision controlling venue in patent infringement actions, and that it is not to be supplemented by the provisions of 28 U.S.C. § 1391(c).” Id. at 229.

In the dispute before the High Court in TC Heartland v. LLC D/B/A Heartland Food Products Group V. Kraft Foods Group Brands LLC., the court will consider the argument that Federal Circuit precedent contradicts Fourco.  The decision in TC Heartland could have a significant impact on patent litigation in this country given the disproportionate share of such cases now in Texas courts.

The petitioner briefing and amicus filings are now in, including the one I filed on behalf of Unified Patents.
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