Boardside Chat Thursday 7/20

The PTAB’s next Boardside Chat webinar will be held this Thursday, July 20, from noon to 1 p.m. ET. The panel of APJs will discuss issues that typically arise during an America Invents Act (AIA) trial proceeding before the PTAB. The scheduled topics include filing of multiple petitions, discretionary denial, new

Empirical Studies Refute Oft Repeated Fallacies

The PTAB released two studies on historical petition filing practices this month. One directed to the frequency of so-called serial/parallel petition filings, and the other pertaining to Orange Book/Biologics patents. As with the agency’s earlier studies on these same topics (2021), the refreshed data again demonstrates that Orange Book patents are very rarely subject to AIA trial proceedings, and that abusive, serial petition filings have been effectively outlawed for years now.

Of course anyone that actually practices before the PTAB is well-aware of these realities. So, these empirical studies are primarily directed to the oft repeated criticisms of moneyed lobbyists and disingenuous critics at a time when both Congress and the agency grapple with wildly conflicting narratives.Continue Reading PTAB Data Belies Outdated Criticisms

Estoppel Reasonably Could Have Raised During Trial?

The challenge to the IPR estoppel statute in Apple et al., v. California Institute of Technology focused on the statute’s use of “during.” That is, whether “reasonably could have raised” is assessed at the time the petition is drafted, or, during the actual proceeding as stated in the statute.

While the Court passed on the question today, its reasoning could be in conflict with contrary Federal Circuit precedent.Continue Reading SCOTUS Passes on Scope of IPR Estoppel – Joinder Scope Remains Uncertain

Failed PTAB Bill Reemerges For a 6th Time

Yesterday, U.S. Senators Chris Coons (D-Del.),Thom Tillis(R-N.C.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Hawaii) introduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act (here). Also yesterday, some of the very same senators introduced the Patent Eligibility Restoration Act of 2023

The co-introduction of these bills suggests a plan to drive compromise on patent eligibility.Continue Reading New PTAB Bill to Drive 101 Compromise?

Bill to Reset Analysis

Today, U.S. Senators Thom Tillis (R-NC) and Chris Coons (D-DE) introduced the Patent Eligibility Restoration Act of 2023. You can find the text of the bill (here).

The bill is a slightly refined version of the proposal floated last summer. Most of the changes seem directed to assessing the relevance of a mathematical formula as part of the claim, and making clear that otherwise patent ineligible subject matter cannot be saved by mere computer implementation. Presumably these changes are directed to addressing the concerns of those stakeholders in the predictable arts. (The lobbying force behind the effort has always been Bio/Pharma).

The bill essentially wipes the slate clean on 101 jurisprudence by eliminating all so-called “judicial exceptions.” As well it should. Despite those that would counsel otherwise, there is absolutely no rhyme or reason to the food-fight mess that is 101 jurisprudence.Continue Reading New 101 Bill to Avoid Case Law Morass

The ANPRM Proposals That Should Drop Out of the Process

Yesterday I highlighted the ANPRM proposals that are likely to make it into the NPRM this coming fall. Today, I’ll walk through the ones that I expect to be dropped, or at least heavily revised.

The vast majority of these “misfires” suffer from the same fatal deficiency — only Congress can provide for such modifications to the AIA. While the agency has substantive rule-making authority to implement the AIA, it does not have authority to implement regulations that effectively rewrite the AIA statutes themselves.

Given the push back from Congress on the apparent overreach of many of the ANPRM proposals, it is highly unlikely that the agency will carry such proposals forward to the NPRM. Continue Reading PTAB ANPRM – Misfires & Overextensions

ANPRNM Comments Due Today

Today is the comment deadline on the USPTO’s recent Advanced Notice of Proposed Rulemaking (ANPRM). To date some 10,000 comments have been submitted.

At first blush the volume may seem impressive. Turns out, however, that the overwhelming majority of comments appear to be from random individuals spamming the agency with automated form submissions. These submissions do not even address the specific proposals of the ANPRM and offer little background, insight, or analysis other than a paragraph or two of “PTAB bad.” Others in the same spam bucket offer an identical rule proposal — to make the PTAB an opt-in system. Of course, the agency has no power to overrule a statute with a conflicting regulation to allow for opt-in.

Once the agency navigates through less than helpful dross, we can expect an NPRM in the fall responding to the actual ANPRM comments. My guess would be after the close of FY 2023 in early/mid October.

But, what will the actual NPRM look like? Certainly nothing like the ANPRM.Continue Reading PTAB ANPRM Comments & Spoilers

CLE Provided

This coming Thursday at 12PM (EST), IPWatchdog will host the free webinar entitled: PTAB Rules: The Good, The Bad & The Ugly. The webinar will cover the recent Advanced Notice of Proposed Rulemaking (ANPRM), preview stakeholder reactions, Congressional concerns, and discuss the most likely outcomes. Register (here)

With comments due from

Reexamination Deference?

The excessive scope of the PTO’s Advanced Notice of Proposed Rulemaking (ANPRM) on AIA Trial practices is deliberate as it provides favorable optics for the current administration.

Presenting all ideas to the public as opposed to culling out the more (ahem)… “creative,” showcases the open mindedness of the administration—particularly to patent owners. Perhaps a savvy move from a public relations perspective; not so much on the side of demonstrating competence to Congress. As the Director learned a week or so back when testifying before the House Judiciary, public proposals that appear to directly conflict with the AIA statutes, and/or encroach upon the role of the legislature are plainly unwelcome. That said, the warnings of Congress must be reinforced by stakeholder submissions.

The time is now for stakeholders to separate the wheat from the chaff through submitted comments (and in the process provide the agency political cover for the obvious cuts). And an absolute avalanche of comments is coming by the June 20th deadline.

I’ll post thoughts on as many of the proposals as possible here (on an ongoing basis), starting today with the worst of the worst. At the very top of the list of bad ideas is one that has the agency seemingly questioning the PTAB Trial Section’s very purpose. Continue Reading Proposal to Elevate Patent Reexamination Antithetical to AIA Statutes