Bad Counsel, Bad Strategies, or Both?

We are now a full decade into PTAB practice. Yet, many Patent Owners still continue to shoot themselves in the foot when it comes to litigating at the PTAB. When representing a Petitioner, I don’t think I have ever been involved in a case where the Patent Owner hasn’t overlooked its best argument in some respect, or buried it in a heap of weak and/or “dead on arrival” arguments that provide no value aside from undermining the PO’s credibility.

Why is that?

I think there are a number of factors driving this behavior.

Continue Reading Why Do Patent Owners Keep Making the Same PTAB Mistakes?

CAFC Clarifies Role of PTAB Disclaimer

Over the years, whether patent reexamination, patent reissue or AIA trial, patent owners have attempted to amend their claims through argument alone. Typically a Patent Owner would argue that its claims means something specific, and that by affirmatively saying so in the post-grant prosecution history, the claims should be interpreted as such by virtue of disavowal/disclaimer. The reasoning is that since such a disclaimer/disavowal would have been recognized for such in the original prosecution, why should it be any different in a post-grant setting?

Today, the CAFC has finally shut down that argument as being inconsistent with patent statutes and the AIA amendment policies.

Continue Reading Amendment by Argument at the PTAB?

Program Offers Unique Opportunity to Bar

On Wednesday, November 9th (10AM – Noon (EST)), the Patent Trial and Appeal Board’s (PTAB) Legal Experience and Advancement Program (LEAP) will host its brand new event, LEAP to Chambers.

LEAP to Chambers provides LEAP-eligible practitioners an inside perspective on practicing before PTAB. LEAPers will visit the Alexandria, Virginia, office for a PTAB judge-guided tour of PTAB’s facilities. LEAPers also learn oral and written advocacy tips from PTAB judges. Visit the Legal Experience and Advancement Program (LEAP) for more information about the LEAP program.

Be sure to register (here) by Friday, October 28th.

Ending Opensky IPR Participation Underwhelming

Back in March, I explained that the Opensky mess needed to be immediately checked by the USPTO. The legitimacy of the PTAB is at stake when when profiteers are actively conspiring to abuse the IPR process by offering to deliberately file papers for an improper purposes. The situation called for swift and decisive correction…..but this is the federal government. So, we waited for a new Director to be appointed, and then, largely unnecessary amicus briefing for such a unique fact pattern.

Six months later (IPR is effectively done except for the Final Written Decision), we finally have a determination out of the Director. But, the outcome is far from satisfying for anyone that is hoping for the PTAB to start policing bad actors akin to an Article III Court.

Continue Reading Its Time for the PTAB to Stop Playing Good Cop

Examination Quality vs Speed

The USPTO has had an accelerated examination program known as “Track-1” since 2011. The program allows patent applicants to advance a patent application out-of-turn such that a determination can be made within 12 moths of filing. That is, like a Lightning Lane of sorts (for you Disney fans) to skip the typical wait times for patent examination. In this way the program is said to be designed to foster “faster innovation.”

In theory, it is a great idea. If you are a start-up, for example, and need to get your claims allowed quickly for business reasons. Paying a fee for the expedited attention, agreeing not to extend filing dates of responses, and limiting the number of claims, is a fair compromise.

But, if patent examiners are rushed to judgement to meet internal deadlines, and do so without the most relevant information, the USPTO is doing the public a disservice. Recent trends also suggest that examiners may be moving these cases to allowance to get time-sensitive work off of their dockets.

Continue Reading The PTO Has a Track-One Filing Problem

Fall CLE

In a few days, the most comprehensive and informative of the big-room, CLE events returns — IPWatchdog Live 2022. On September 11-13, Live returns to Dallas for its second annual event.

Bringing together the intellectual property community—from politicos, to business executives, to attorneys, and inventors, Live is unique among the usual slate of fall bar organization meetings. With three days of programming, and roundtable discussion from industry insiders, judges, and business people, a multitude of topics will be explored from monetization, PTAB, ITC, legislation, funding, venue, and any more. (full agenda here)

The following week, the IPO holds its Annual Meeting in Los Angeles September 18-20, and later in October (27-29th), AIPLA returns to DC for its own Annual Meeting. Interestingly, AIPLA has booked the band Blues Traveler for its Friday night Gala….evidently. if you haven’t been out to a live CLE since the pandemic, “the hook will bring you back.”

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

Thursday Boardside Chat

Last month, the USPTO) published a Federal Register Notice requesting public input on Director Review, Precedential Opinion Panel review, and internal circulation and review of Patent Trial and Appeal Board (PTAB) Decisions. This Thursday @1PM (EST) the PTAB will host its next Boardside Chat webinar. Vice Chief Administrative Patent Judges Melissa Haapala and Kalyan Deshpande will discuss the request for public comment. Webinar link (here)

A question-and-answer session will follow the presentation. Questions may be emailed in advance or during the webinar to PTABBoardsideChat@USPTO.gov.

Long Battle Ahead for Patentable Subject Matter Clarity

Remember the good ole days when every bar meeting had that Alice panel that said the same thing over and over? (i.e., “your guess is as good as mine”) And by good ole days, I mean the days when you skipped that panel and caught up on your emails back in your room. 🙂

Well, here we go again.

With American Axle failing to tempt the SCOTUS, the message has become clear….”Congress, this is your mess to fix.” So, we now embark on yet another adventure on sorting out the patent world’s biggest hairball – and that’s saying something!

Continue Reading Tillis Bill’s Shot Across the Bow on 101

Judicial Conference & Congressional Attention Stir Change

This time last year, the Western District of Texas (WDTX) was getting a lot of attention from Washington DC policymakers. That is, a plaintiff’s ability to guarantee that its case would be heard by Judge Albright simply by filing in his Waco court was seen as “unseemly” and, coupled with the fact that his court had close to 30% of the nation’s patent docket, improper. Likewise, to many, the twenty or so successful mandamus filings reversing the Judge on issues of venue only amplified the urgency for legislative and/or judicial intervention.

Whether you agree with the above sentiment or not, it was clear as far back as last summer that these practices were plainly living on borrowed time. Back then, it was clear within DC policy circles that if the Judicial Conference did not step in and put an end to Judge Albright’s perceived monopoly on patent cases, that the legislators were prepared to take action.

Yesterday, the Chief Judge of the WDTX took action.

Continue Reading WDTX Scatters Patent Docket – Now What?

Summer Focus on Politics & Policies

As we move into the slower months of the summer in Washington D.C., here is a quick run-down of a number of hot-button IP legislative and policy matters.

  • 101American Axle presented the best hope for 101 reform coming from SCOTUS. The back of the hand provided by the Court (despite the gov’t recommendation) is exceedingly rare for a patent case. What this should tell you is that the Court is giving up, and leaving this matter to the legislative branch. As to that option, there was a Herculean effort to get something done a few years back that was ruined by extreme viewpoints (as is the way of DC these days). I have little hope anything will be done on the legislative front soon. With midterms on the immediate horizon, and the PTAB Reform Act on deck, look to 2023 or beyond for any legislative effort. That said, I wouldn’t hold my breath.
  • PTAB Reform Act – With Director Vidal providing a clear pathway to avoid discretionary denials, I would not expect to see more than a handful of such denials going forward. For example, where a petitioner refuses to file the full Sotera stipulation. As such, the bill simply would prevent the next Director from reinvigorating this practice. The other proposed changes in the bill, are simply not very impactful. There were some hearings on the Hill a few weeks back designed to show that the sides of the issue could be extreme, and that the Bill was a fair compromise. The invited speakers did their job in that regard. I expect the Bill to reach a floor vote in the fall session. I wouldn’t expect too much push-back given the limited set of changes. This is Leahy’s IP swan song, and the Bill has traction.
  • PTAB Abuse – As I predicted a few months back, the new Director Vidal has turned her attention to the OpenSky debacle. The Director has now sought amicus input, which is more about optics than anything else. I suspect that agency knows where it is going, but, the public input will help insulate it from critiques on making agency policy through adjudication that is independent of public input. A new test will seemingly be established as to when the PTAB is being abused. I proposed my ideas well in advance. I expect some kind of factor-based test along the lines that I outlined, OpenSky to be sanctioned with termination (and probably more), and the PQA IPRs to be allowed to continue. (By not staying these proceedings, that writing seems already on the wall. Don’t count that money yet VLSI!)
  • Notice of Proposed Rules – The USPTO has promised some Notice-and-Comment Rulemaking on the Director Review process post-Arthrex, which should be relatively straight forward. The agency has also recently proposed some adjustments to the calculation of PTA in light of certain IDS filings. I don’t see anything else on the immediate horizon.

Should make for an interesting fall, just in time for IPWatchdog live 2022 in Dallas.