By Scott A. McKeown
| February 8, 2017

Inaugural PTAB Bar Association Conference & Much More


For those seeking some PTAB related discussion/CLE in the months ahead, there are a multitude of upcoming programs.

March 1st-3rd: The Inaugural Conference of the PTAB Bar Association will be held in Washington D.C. (here) This program will offer 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. Don't miss the uniquely focused discussion of PTAB ethics and potential inequitable conduct risks on Friday.

March 7th: - Best Practices for Proving a Document is a Printed Publication in an Appeal or AIA Trial (PTAB -Boardside Chat) (to be rescheduled)

March 9th-10th: The UTCLE Advanced Patent Law Institute will be held at the USPTO's Alexandria campus. (here) This program will offer a broad range of patent related topics, including extensive discussions of PTAB trial practice and the impact of recent Federal Circuit Decisions.

March 10th: For those on the west coast, the Washington State Bar Association will hold its 22nd Annual Intellectual Property Institute in Seattle. (here)  This program will also offer a broad range of IP related topics, including a discussion of best practices for PTAB trials.

March 21st: MIP U.S. Patent Forum 2017 will be held in Palo Alto (here). This program offers a full day program focusing on AIA trial practices.

May 10th-11th: American Conference Institute presents its Third Annual Post-Grant PTO Proceedings in New York City (here). This two-day event will cover a variety of AIA Trial Proceeding topics.

May 16, 2017: MIP PTAB Forum 2017 will be held in New York City. (here)  This is a full-day forum on PTAB trial practices.

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

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By Scott A. McKeown
| January 25, 2017

Burden of Production on Article III Standing to Bolster 315(b) Disputes at CAFC?


Two weeks back, the Federal Circuit made clear that Article III standing is necessary for petitioners to appeal from adverse decisions in AIA trial proceedings. Phigenix, Inc. v. ImmunoGen, Inc. (here)  The Phigenix decision follows an earlier decision, Consumer Watchdog v. Wisconsin Alumni Research Foundation (Warf) finding the same Article III standing requirement for the now defunct inter partes patent reexamination. Thus, Phigenix was expected given that differences in AIA trial proceedings and patent reexamination are inconsequential with respect to the standing debate (and in virtually all other respects).

While Phigenix is well on the radar of public interest groups and like organizations that seek to institute an AIA trial proceeding on patents of interest, the impact of this decision could complicate appeals for certain operating companies should the en banc decision in Wifi One play out as expected.
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By Scott A. McKeown
| January 12, 2017

315(e)(2) Estoppel Application Less Than Straightforward


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).  After Last year, in Shaw Industries Group, Inc. v. Auomated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016) the interpretation of "reasonably could have raised during that inter partes review" has been unnecessarily complicated.

Shaw had petitioned for a writ of mandamus instructing the PTO to institute IPR based on a ground the Board previously denied as redundant.  Id. at 1299.  To satisfy one of three requirements for such a writ, Shaw argued that it had no other adequate means to attain the desired relief because it had brought that ground before the PTO and thus may be estopped from arguing the ground in any future proceeding.  Id.  However, the Court found no reason for Shaw to fear estoppel, holding that “[t]he plain language of the statute prohibits the application of estoppel under these circumstances.”  Id. at 1300.  The Court’s logic was that an IPR does not “begin until it is instituted.”   Id.  According to the Court, under Section 315 and due to its term “during that inter partes review,” an IPR petitioner could not have raised (or have reasonably raised) any ground in a petition for which the PTAB did not institute trial.  Shaw’s proffered invalidity ground had been denied and thus never entered the IPR; therefore, Shaw would not be estopped from its new invalidity argument.  The take-away from Shaw is that Section 315(e) does not estop an IPR petitioner from challenging a patent based on petitioned but non-instituted grounds of unpatentability.

The legislative intent behind 315(e)(2) is quite the contrary.
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By Scott A. McKeown
| January 11, 2017

Key Administrative Law Doctrine on the Congressional Chopping Block & Onerous Rule Hurdles


As pointed out in yesterday's Top 5 PTAB Trial Developments of 2016, the Administrative Procedure Act (APA) is the constitution of Article I courts. In its 70 years of existence, the APA has never been modified. Yet, over time, common law developments have been intermingled with APA considerations — none more prominent than the "Chevron Doctrine." Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984). This judge made doctrine stands for the proposition that where there is silence or ambiguity in a statute conveying agency authority or action, that courts should apply deference to reasonable agency interpretations. Critics of Chevron argue that it cannot be reconciled with the APA, and has led to a highly inconsistent body of case law.

Politicians argue that Chevron allows regulatory agencies to create law independent of judicial review, and leads to an unwarranted expansion of costly bureaucracy.

Today, the House will begin to consider HR. 5, which not only proposes to eliminate the Chevron Doctrine by amending the APA to expressly exclude it, but also proposes to heap a boatload of additional regulatory roadblocks to the promulgation of agency rules. 
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By Scott A. McKeown
| January 10, 2017

2016: The Administrative Procedures Act (APA) Takes Center Stage


In re Cuozzo Speed Technologies was certainly a watershed moment for AIA trial practices. The 2016 decision settled years of seemingly endless debate on the propriety of the Patent Trial & Appeal Board's (PTAB) claim construction rubric. By endorsing the Board's use of the Broadest Reasonable Interpretation (BRI), the high court squelched a key rallying cry of PTAB critics and simultaneously reinforced the legitimacy of AIA trial proceedings. Yet, while the Cuozzo challenge to BRI was noteworthy in a broader sense, the BRI debate (no matter how it came down) was not expected to change AIA trial practices in significant regard.

Other notable 2016 events included PTAB rule changes allowing preliminary responses to offer new testimonial evidence.

But, for practitioners, the real impact in 2016 came from the Federal Circuit's recalibration of AIA trial practices.  The Court repeatedly reinforced the mandates of the Administrative Procedures Act (APA) in assessing acceptable AIA trial practices. Thus, the top 5 PTAB decisions this year come not from the PTAB or the Supreme Court, nor from rule changes, but instead, the Federal Circuit.
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