Valve Precedent Reined In by Director Review Order

Last week the Director vacated IPR denials based upon a misapplication of Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 (Apr. 2, 2019) (precedential). As a reminder, Valve, extended the discretionary denial practices set out in General Plastic of so-called “follow-on” petitions of a same party to that of related parties having a “significant relationship.” However, over the years the unique scenario of Valve started to be argued as applicable to more typical scenarios where different parties happened to be litigating the same patent in different, unrelated suits.

Most recently, the Valve drift ensnared an IPR petitioners Honda, GM and Ford based on earlier filings of a co-defendant (Volkswagen). In last week’s Director Review Order the Director made clear that where there are different accused products in different court proceedings there is not a “significant relationship” between filers outside of “relevant or extenuating facts or circumstances.”

Continue Reading PTAB Recalibrates Related Party Analysis
Boardside Chat Thursday

The PTAB will conduct its next Boardside Chat webinar this Thursday, March 21st, from noon to 1 p.m. ET, to discuss hearings before the Board. The presentation will include a virtual tour of the hearing rooms, along with information on some of the updated technical capabilities available, as well as statistics on in-person versus remote hearings over the past year. A panel of PTAB judges will share practical tips and discuss strategies that may be effective in hearings before the Board. The panel features:

  • Acting Deputy Chief Administrative Patent Judge Michael Kim
  • Lead Administrative Patent Judge Stacey White
  • Administrative Patent Judge Michael Astorino
  • Chief Clerk Erica Swift
  • Deputy Chief Clerk Kulunie Cannon

As always, a question-and-answer session will follow the presentation and questions may be sent in advance to

Register (here)

USPTO Issues NPRM to Codify Amendment Pilot Permanent

While awaiting the overdue Notice of Proposed Rulemaking (NPRM) on the hodgepodge of proposals from last year, the agency has issued a few NPRMs over the past week. First was a proposal to streamline the pro hac vice practice (non-event). Late last week a slightly more interesting NPRM was issued to formalize the provisions of the Motion to Amend (MTA) Pilot Program. (here)

As a reminder, the MTA Pilot Program provides a patent owner who files an MTA with options to request preliminary guidance from the PTAB on the MTA and to file a revised MTA based on the feedback. Of course, it is rarely a good idea to amend claims at the PTAB regardless of the mechanisms used. This is why the agency reports less than 10% of proceedings include an MTA. Still, for those few patent owners interested in amending, the pilot program offers some incremental procedural value.

The NPRM, aside from seeking to codify existing practices, additionally outlines the exercise of discretion in the wake of the Hunting Titan case. That is, what role does the agency play in raising unpatentability grounds of its own for amended claims — particularly given the presumption of validity accorded issued claims?

Prior to Hunting Titan, the agency took the view that it should be a “rare circumstance” when the PTAB might raise a new ground of unpatentability on its own. The CAFC found that standard inconsistent with the agency’s public policy in protecting the public from improvidently granted patent monopolies.

The NPRM proposes that the Board will exercise its discretion in raising new grounds where a petitioner stops participating, or decides not to challenge the amended claims. In exercising that discretion, the Board may request prior art search support from the examining corps; a rare scenario. But at least the academic debate on how unexamined claims might be accorded a presumption of validity has been put to rest.

ANPRM an Unnecessary Slog to a Small Rule Package

It has been almost a year since the Patent Trial & Appeal Board (PTAB) released its Advanced Notice of Proposed Rulemaking (ANPRM) on AIA trial practices. As a reminder, the ANPRM was a sprawling collection of rule proposals and requests for public feedback. I previously pointed out that the proposal was unnecessarily ambitious and was destined to be bogged down for proposing to exceed the agency’s regulatory jurisdiction.

Well, the wait is almost over.

Continue Reading Where are the New PTAB Rules?

Post-Amgen Claiming Techniques in Focus

Last year’s landmark decision in Amgen V. Sanofi emphasized that “the more a party claims, the broader the monopoly it demands, the more it must enable.” That is, particularly when claiming a broad genus of antibodies, the specification cannot be a research assignment to engage in trial and error as to the recited claim scope.

Since that time and perhaps dealing with inadequate specifications filed prior to Amgen, prosecutors have considered whether fallback claiming techniques such as Jepson format claiming or mean-plus-function formatted claims can at least secure some protection in the case where broader claims fail.

The USPTO is now committed to providing clarity on these topics in In re Xencor.

Continue Reading USPTO Appeals Panel to Clarify Antibody Claiming in MPF & Jepson Format

Common AIA Issues Discussed

This coming Thursday January 18th (noon to 1 p.m. (EST)) the PTAB will host its first Boardside Chat of the year. The program will discuss issues that typically arise during an America Invents Act (AIA) proceeding before the Board (PTAB). Topics will include:
• Preparing a patent owner preliminary response
• Preparing a patent owner response
• Motions to amend
• New arguments
• Motions to strike
As always, a question-and-answer session will follow the presentation. Questions may be sent in advance or during the webinar to
Register (here)

Avoiding Cellect

The Federal Circuit’s In re Cellect ruling has significant implications for patent portfolios, emphasizing the need for careful planning to avoid obviousness-type double patenting (OTDP) that could compromise statutory term and patent validity. Particularly, patents with patent term extension (PTE) may face increased risk, as reference patents in the same family might have already expired during the PTE period, rendering claims incurably invalid if not addressed promptly.

What should practitioners and in-house counsel be doing right now?

Join me Wednesday, January 10th for a free CLE webinar discussing what is at risk, what should be done immediately, and what to consider going forward. Register (here)

Latent OTDP Issues & Litigation

The Federal Circuit’s decision in In re Cellect clarified that patenting obvious variants of the same invention across multiple patents—Obvious-Type Double Patenting (OTDP)—can result in the elimination/reduction of Patent Term Adjustment (PTA). OTDP was fatal to the challenged Cellect patents given the expiration of the reference patent. This was because a terminal disclaimer to remedy OTDP is not possible after expiration. Earlier this year I explained ways to proactively insulate a patent portfolio from potential Cellect vulnerabilities.

For patent owners facing newly invigorated OTDP attacks in litigation, and where a terminal disclaimer can still be filed, the potential loss of significant PTA creates a strategic quandary.

A terminal disclaimer cannot be withdrawn once filed. So, if a patent owner simply files a terminal disclaimer to moot the OTDP challenge, years of additional patent term (PTA) may be unnecessarily surrendered where the patent owner might have won. But, if the patent owner loses on OTDP without a terminal disclaimer on file, the patent is invalidated.

Recently a patent owner attempted to resolve this quandary with a contingent terminal disclaimer.

Continue Reading Contingent Terminal Disclaimers?

Claim-Based Analysis Required for Pre-AIA Patents Only

One of the more confusing developments in patent law was pronounced in Dynamic Drinkware v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). In Dynamic the Court held that a provisional application’s effectiveness as prior art under 102(e) depends on its written description support for the claims of the issued patent. In other words, if the patent claims ABC, and C is not supported in the provisional, the provisional loses 102(e) prior art status for all of its disclosure. So, if looking to use the provisional date for AB alone, which is supported, the claim-based analysis would still prevent such reliance.

The applicability of the strange claim-driven analysis of Dynamic was recently considered relative to AIA patents. Today’s precedential PTAB decision makes clear that the AIA statutory framework dispensed with this faulty claim-centric scheme.

Continue Reading Dynamic Drinkware Analysis Unnecessary for AIA Patents

Internal Procedures Discussed

The U.S. Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking (NPRM) on the Patent Trial and Appeal Board’s (PTAB) pre-issuance internal decision circulation and review last month. The PTAB also issued a new Standing Operating Procedure (SOP) on pre-issuance and post-issuance decision review, and updated and renumbered its SOP on handling remands from the Federal Circuit. This Thursday (11/16) the PTAB will host a Boardside Chat webinar from noon to 1 p.m. ET to discuss the NPRM and the SOP with PTAB’s Vice Chief Judge Melissa Haapala.

While this information offers increased transparency to interested members of the public on internal agency processes, it is not especially interesting from a practitioner perspective.

A question-and-answer session will follow the presentation. Questions may be sent in advance or during the webinar to Register (here)