Previous Testimony May Highlight Infringement

When a failed PTAB petitioner heads back to court, Patent Owners sometimes seek to leverage the broad claim reads proposed at the PTAB to demonstrate infringement. Recently, in ChanBond, LLC v. Atlantic Broadband Group, LLC, et al., (D.DE., Apr. 19, 2021), the district court considered the admissibility of previous IPR testimony to an infringement case. Continue Reading Can Previous IPR Testimony Come Back to Haunt a Failed Petitioner?

Frequent Losing Argument at the PTAB Finds Rare Exception

A common losing argument at the PTAB is that a reference used in an obviousness combination is non-enabling.  The reason this argument fails is that a reference is prior art for all that it teaches.  But even this proposition has its exceptions.  For example, one would not expect a Dick Tracy comic from the 1930s showing a communicating wristwatch to somehow preclude patents on today’s smartwatches.

But where is the line drawn as to aspirational disclosures and, fair, prior art teachings?

Continue Reading Aspirational Prior Art Disclosures & Enablement

Free Program Spans April 19-22nd

For those seeking some PTAB-related CLE programming this spring, look no further than IPWatchdog.  The inaugural PTAB Masters™ program, will be presented by IPWatchdog® next week, April 19-22nd. Each day the webinar will provide a different PTAB related topic.  Tune in each day for 2-3 hours of interactive content.

I am pleased to chair this program together with Robert Greene Sterne.  The inaugural program will provide the patent owner perspective, and is aptly titled “Beating the PTAB.”  The program is designed to prepare patent owners for the challenges of monetizing patents by presenting best practices, expert insights, and master level planning. The program spans the universe of PTAB issues, from patent prosecution strategies to harden a portfolio prior to assertion, through PTAB trial and litigation tactics and strategies.

Keynote speakers for the several days of programming include former USPTO Director David Kappos; former Chief CAFC Judge Paul Michel; Senator Thom Tillis (R-NC); and recently departed USPTO Director, Andre Iancu.

(Register here)

I look forward to an action packed program and hope you can participate!

Are Continuation Patents Still Viable After a Parent is Cancelled?

Patent families are formed of multiple continuation/divisional filings stemming from the same disclosure. Typically, continuation patents present marginally different claim sets.  An age old prosecution strategy is to keep a continuation pending to adapt claim sets in an iterative fashion to competitor designs. But what is the impact of the PTAB cancellation of a parent patent’s claims on such pending continuations? Continue Reading Patent Family Viability After a PTAB Loss?

Unified Patents Insights Webinar This Thursday

This Thursday April 1st, Unified Patent’s Insight Webinar series (free) will present its April offering at 12PM(EST):

The PTAB and the Western Way: How Judge Albright’s Court and the Board Interact
In the webinar, the panel will  explore the impact of the Western District of Texas on the patent landscape, particularly how it has affected the ability to seek AIA trial proceedings at the Patent Trial and Appeal Board (PTAB).  The growing prominence of the Western District of Texas as the go-to jurisdiction for NPEs will be discussed, including the affect of the recent VLSI decision.  In addition, the panel will discuss the effect of the Western District’s aggressive trial-date scheduling and transfer practices on the PTAB in light of Fintiv.

(register here)


Jordan Rossen — Senior Patent Counsel, Unified Patents

Scott McKeown — Partner, Ropes & Gray LLP

Nicholas Kim — Senior Attorney, IP Litigation, Microsoft

David Saunders — Director of Litigation, Juniper Networks

Joinder Estoppel Revisited

A few weeks back, the federal Circuit handed down a decision in Uniloc 2017 LLC v. Facebook Inc, capping off a complicated procedural history.  In its decision, the Court sorted out the estoppel impact of IPRs finishing a few months earlier than others, and what that meant for parties common to these IPRs.

Left unanalyzed, however, was whether or not the PTAB’s initial finding of estoppel was appropriate in the first instance given the peculiar manner by which parties are joined to PTAB proceedings via copy-cat petitions. Continue Reading Evolution of PTAB Joinder Estoppel

APA Challenge Strikes a Chord

I’ve read a number of articles over the past few days that argue since the mandamus on Fintiv failed in Mylan Laboratories Ltd. v. Janssen Pharmaceuticals N.V., that this decision somehow forecloses the relief sought in the APA suit against the USPTO — not even close.  The question of appellate jurisdiction over denied institution decisions (or what would amount to a proper mandamus) has absolutely nothing to do with the direct challenges made by the plaintiffs in the pending APA lawsuit.

Indeed, I expect the application of Fintiv to be enjoined within weeks (if not sooner). Continue Reading PTAB Fintiv Factors Likely to Be Enjoined as APA Violation

Webinar to Discuss Motions at the PTAB

This Thursday March 18th, from noon to 1PM (EST), the PTAB will conduct a Boardside chat to discuss motions practice in PTAB trial proceedings.

Judges Erica Franklin and Eric Jeschke will present an overview of requirements for PTAB trial motions in general and provide a review of certain types of motions.

The webinar is free and open to all. There will be a Q&A session at the end. Questions may be sent in advance or during the webinar to

The chat may be joined (here)

Targeting a Moving Target

For those seeking some PTAB-related CLE this month, don’t miss today’s one-hour briefing, entitled: PTAB 2021 – Targeting a Moving Target. Practising Law Institute is presenting the program today at 1pm (EST).

Register (here)

The program will explore the recent uptick in reexamination filings, the current trends with respect to 314(a), the potential impact of Arthrex and a new Director, pending 314(a) litigation, potential rule changes/proposals and more.  I will be joined by Robert Greene Sterne of Sterne, Kessler, Goldstein & Fox, P.L.L.C., looking forward to an interactive conversation.

I hope you can join the conversation.

Amicus Briefing May Help Get SCOTUS Attention on Growing 101 Morass

In one of the more closely-watched cases involving patent eligibility, American Axle v. Neapco, Judge Moore recently highlighted how “bitterly divided” the Federal Circuit is on patent eligibility, and predicted with a “reasonable probability” that the Supreme Court will step in and force the Federal Circuit to reverse course on issues of eligibility.

American Axle—involving driveline propeller shafts for automotive engines—highlights the sharp divide in how various Federal Circuit panels apply the Supreme Court’s eligibility guidelines and the resulting uncertainty that inventors, patent owners, and accused infringers face in determining whether inventions are eligible under § 101 as interpreted by the Supreme Court’s ruling in Alice v. CLS Bank.  Indeed, in an earlier decision denying rehearing en banc, a sharply divided Court issued two concurrences justifying the panel’s application of § 101 law and three separate dissents urging the full court to take up the issue.  Understanding the differences in opinion here may help patent practitioners navigate tumultuous § 101 issues until the Supreme Court weighs in again.  American Axle petitioned the Supreme Court for a writ of certiorari on December 20, 2020.  The petition calls for clarity on § 101 and may be taken up in conference shortly.

The Court has shown some interest in the case, soliciting views of the government. Amicus support has also followed, including a brief filed by Senators Tillis and Coons, and former PTO Director David Kappos. Consideration of American Axle is the quickest path to some form of clarity for patent subject matter eligibility disputes.

Continue Reading American Axle Offers A Glimmer of Hope on Potential 101 Reform