Director Adopts Panel Opinion

A few weeks back, I explained that the new Arthrex rehearing option— to the Director of the USPTO —was a non-event for practitioners. Reason being, the Director cannot just unilaterally reverse decisions “just because” he/she likes or dislikes patents.  Of course, any such decision would be reviewable on appeal by the Federal Circuit.

While I was initially concerned with such filings piling up during the tenure of an Acting Director, the Acting Director is able to perform these duties (and issue patents) for a limited period of time while a politically appointed Director is seated.  At least for now, that is how such rehearings will be decided.

Yesterday, the Acting Director issued his first two decisions, adopting the panel decisions in each as the final decision of the agency. Continue Reading Director Rehearing Decisions: No Path for Delay

Unpacking the Importance of the Claimed Invention from Other Commercial Components

Objective indicia of non-obviousness, such as commercial success and industry praise, can be probative evidence of non-obviousness. In order for the objective evidence of secondary considerations to be afforded substantial weight, however, the patentee must establish a nexus between the evidence and the merits of the claimed invention.  A presumption of nexus can be established if the patentee shows that the evidence is tied to a specific product that embodies the claimed invention.

Of course, the challenger can rebut the presumption of nexus by showing that the commercial success or industry praise is due to features other than the claimed invention. But, this rebuttal may not be so straightforward where the claimed invention is a tool of a multi-tool package.  In this instance, the inventive component must be weighed, regardless of the popularity/success of other components.  Continue Reading PTAB Faulted on Objective Indicia Analysis

What is “Materially Identical?”

The doctrine of issue preclusion can prevent an issue previously litigated at the PTAB from being re-litigated in a later proceeding, such as in the district court. In order for issue preclusion to apply, a “materially identical” issue must have been “actually litigated and determined by a valid and final judgment,” where the determination was “essential to the judgment.” See Papst Licensing GMBH & Co. KG v. Samsung Elecs. Am., Inc., 924 F.3d 1243, 1252 (Fed. Cir. 2019). Thus, once appeals have been exhausted, the determinations in a FWD from the PTAB may have preclusive effect in future actions, even on related patents so long as they raise “materially identical” issues.

Which begs the question: What is the scope of materially identical? Continue Reading PTAB Decisions & Issue Preclusion

Arthrex Information Updated

The USPTO requested feedback on the interim Director review process and, in response to that feedback, has updated the Arthrex Q&As. In response to questions from the public, the current update revises several existing Q&As and adds new Q&As to clarify certain aspects of the interim Director review process. For example, the current update clarifies information about party requests and explains the process used internally at the Office. Continue Reading PTAB Clarifies Director Rehearing Details

FWD Statutory Estoppel vs. Collateral Estoppel

In designing the America Invents Act (AIA), statutory estoppel of 35 U.S.C. § 315(e)(2) was set to by legislators to attach at the time of the PTAB’s Final Written Decision (FWD).  This is despite the fact that further appeals are routine.  This statutory design was responsive to the previous criticism of inter partes reexamination estoppel, which attached only after all appeals were exhausted.

Yet, this statutory design often puts district courts in the unenviable position of treating an otherwise non-final decision, as final……at least with respect to petitioner estoppel.  As to claims that may be cancelled in the same FWD, courts are free to await further appeals.

This unbalanced scenario can be exploited by Patent Owners. Continue Reading Patent Owner Uses FWD Cancelling Claims as a Sword & Shield

AIPLA Webinar Next Tuesday

For those seeking some PTAB-related CLE, consider next Tuesday’s AIPLA webinar @12:30 (EST) entitled:  Discretionary Denials Revisited: The New Politics of FintivRegister (here)

The program will explore the increasing politicization of the USPTO Director position, and what may be on the horizon relative to the uncodified discretionary policies of the last administration (i.e., the Fintiv Factors). As plaintiffs continue to flock to the Western District of Texas (WDTX) for the benefit of its aggressive schedule, the PTAB is left to grapple with the practicalities of the mushrooming WDTX docket, stipulations of parties on common issues, and the role of the AIA in the overall equation. This 1.5 credit program will explore the current trends in 314(a) disputes/decisions, and what to expect going forward as the PTO awaits a senate confirmed Director.

Hope you are able to join.

Pursuing Different Constructions Before the PTAB & Court?

Since the PTAB started applying the Philips standard for claim construction, petitioners have put a lot more thought into their proposed claim constructions. This is because it is no longer possible to point to the PTAB’s use of the broadest reasonable interpretation (BRI) as the basis for a different construction.

Now, petitioners are very careful to be consistent with disputed terms.  But, what happens if a petitioner argues for a broader construction at the PTAB, then argues for a more narrowed construction in the district court? Continue Reading Keeping Your PTAB Story Straight

Arthrex Provides Little Strategic Value in the End

Today the PTAB issued interim guidance on adaptations to its rehearing practices.  The interim procedures allow for a rehearing to be filed to the Director, this option can even be pursued after a failed rehearing to the assigned PTAB panel.  So, good news for those parties seeking another path for delay. On the other hand, the Director is not going to change the outcome of cases beyond current practices (roughly 5% win rate on rehearing).

In essence, the Appointment’s Clause battle, much like the constitutional challenges to the PTAB posed in Oil States and Cuozzo, was a long road to nowhere. Continue Reading PTAB Director Rehearing Adds Little

Director Has Final Say…But Mostly More Busy Work

I’ve ignored the Arthrex decision for a few days, largely because it never really interested me (still doesn’t).  Of course, if you geek out over the severability doctrine, or the viewpoints of liberal versus conservative justices on the growing administrative state — have at it.  I just always saw it as an academic exercise that would have little impact on actual day-to-day PTAB practice.  As I predicted back in March, the SCOTUS result in Arthrex wasn’t exactly surprising.

While the Arthrex outcome will not change much in terms of PTAB strategy, there will be a beautiful mess in the short term. Continue Reading PTAB Rehearings After Arthrex?

OED to Explain PTAB Admission Practice Thursday

This Thursday, June 17th, from noon to 1 p.m. ET, the PTAB’s Boardside chat webinar will explore the mechanics of admission to practice before the Patent Trial and Appeal Board (PTAB).

Office of Enrollment and Discipline (OED) Attorney Kimberly Weinreich will discuss admission to practice before the United States Patent and Trademark Office (USPTO), including current requirements for the patent bar and proposed administrative updates and comments received from the public. PTAB Supervisory Patent Attorney Steven Fulk will discuss pro hac vice admission before the PTAB.

There will be a Q&A session at the end.  Questions may be in advance or during the webinar to

Register (here)