Standing Dispute Highlights 315(e)(2) Estoppel Concern

Article III standing has been a problem for certain petitioners seeking review of adverse Patent Trial & Appeal Board (PTAB) AIA trial rulings. This is because, while the AIA statutes provide that anyone other than a patent owner may challenge a patent at the PTAB, Article III standing is necessary for petitioners to appeal adverse PTAB decisions to the Federal Circuit. Phigenix, Inc. v. ImmunoGen, Inc.  Since Phigenix, there have been a number of Federal Circuit decisions exploring the degree of harm necessary to convey Article III standing in this context.

Earlier this week, the Federal Circuit analyzed “competitor harm” as a basis for Article III standing along with the potential of adverse estoppel impact of 35 U.S.C. §315(e)(2) on the petitioner.. While the competitor harm analysis may be interesting from an academic standpoint, the more meaningful discussion for practitioners is the Court’s commentary on the 315(e) estoppel impact for such petitioners.  Continue Reading Finality Aspect of Common Law Estoppel May Not Matter for PTAB Estoppel Under 315(e)

PatentsPostGrant.Com May Webinar

The AIA represents a major shift in U.S. patent policy and its full scope and effect remain a moving target.  Opportunities and challenges are presented post-AIA in patent licensing and related agreements such as joint collaborations. New issues include prior sales under Helsinn v. Teva, forum selection clauses & the PTAB, as well as the AIA’s expansion of the scope of prior art and what that means for technology transactions going forward.

Please join me for an interactive webinar discussion on the licensing landscape next Thursday May 23rd@2PM (EST). Register (here).

My co-presenters for this webinar will be Regina Penti, a partner in Ropes & Gray’s IP Transaction Practice, and Matt Rizzolo, a partner in Ropes & Gray’s IP Litigation Practice.

The formal portion of the webinar will begin at 2PM Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period.

To attend the free webinar please sign up via the link above. You will receive a registration confirmation email immediately. One hour prior to the webinar you’ll receive another email with a link and instructions for joining the presentation. CLE credit will be provided (CA, NYC, VA).

Is the 315(b) Time Bar Particular to a “Patent Owner?”

Earlier this year the Patent Trial & Appeal Board (PTAB) instituted trial in Sling TV, L.L.C. et al. v. Realtime Adaptive Streaming, LLC, IPR2018-01331, Paper 9 (PTAB January 31, 2019). In doing so it created a new exception to the 315(b) time bar. The exception explained that the trigger for 315(b) — service of the complaint — was ineffective if the true patent owner was not responsible for the filing.

At the time, I questioned whether this exception made sense given that exclusive licensees commonly assert patents. And, the statutory language and legislative history did not seem to strongly support such a narrow interpretation.

My post was cited in a request for rehearing in a different case, GoPro Inc. v., 360 Heroes Inc., IPR2018-1754, Paper 19 (PTAB April 17, 2019) (here). Today, the Board’s Precedential Opinion Panel (POP) has accepted this case for rehearing. (here)

Amicus curiae filings are due to the Board by May 24th.

Deputy Commissioner to Discuss 101 Guidelines

The USPTO is hosting a Boardside Chat webinar today from noon to 1 p.m. ET to discuss the new guidance on patent eligible subject matter under 35 U.S.C. 101. Deputy Commissioner for Patent Examination Policy Robert Bahr and Lead Judge Mike Kim will present.

The webinar is free and open to all. Access (here)

There will be a Q&A session at the end of the presentation, questions may be sent in advance or during the webinar to

PTAB Cements Institutional Discretion

Back in January, I identified the Board’s expanding view of 314(a) discretion as the most significant development of 2018. In that earlier post, I predicted that one such 314(a)/325(d) case, NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., would be designated precedential in 2019.

Yesterday, the PTAB delivered on my prediction. Continue Reading New PTAB Precedent: 314(a) Not Just for Follow-On Petitions

Patent Owners Largely Ignore Ex Parte Amendment Options

A few weeks back the USPTO issued a Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding (here). The Notice provided no new information, instead, it served to remind the public that reissue/reexamination options exist to amend claims outside of AIA trials. Given the continuous public outcry over AIA amendment difficulties, one would expect a fairly robust jump in reexam/reissue filing rates—especially as these options provide an ex parte amendment process.

However, as recent Patent Trial & Appeal PTAB statistics show, very few Patent Owners are pursuing these traditional amendment paths. Continue Reading Amending Outside of the PTAB: Why So Few Reexams/Reissues?

Mere Existence of JDG Found to be Enough

It can be an uphill battle to secure additional discovery at the Patent Trial & Appeal Board (PTAB) given the “interests of justice” standard of IPR proceedings. For this reason, Patent Owners seeking discovery on petitioner relationships — to discover unnamed parties in RPI/privity disputes — are frequently turned away absent “smoking gun” evidence of such a relationship.

However, a recent decision of the Board appears to take a far more liberal view of multi-defendant relationships where a Joint Defense Group (JDG) is known to exist. Continue Reading PTAB Discovery of JDG Agreements

POPR Disclaimer Dooms Infringement

Some weeks back I explained the varied uses of Patent Trial & Appeal Board (PTAB) trial evidence in district court trial records. However, it is not necessary for a trial to occur for patent challengers to create litigation value. For example, often times a petition will apply prior art that operates in a similar fashion to the accused product.  In distinguishing that art, the Patent Owner is effectively arguing against infringement.

In such cases, a failed AIA trial petition (art distinguished) can result in ultimate victory on the ligation side. Continue Reading When Losing is Winning at the PTAB

Simultaneous/Redundant Petitions Attacking Same Claims Questioned

The Patent Trial & Appeal Board’s (PTAB) new focus on institution equities of serial petition challenges was the most significant development of 2018. Since that time the Board has expanded its equitable focus beyond follow-on petitions and similarly situated defendants to consider parallel litigation timing.

This week, the Board tackled a new consideration. That is, whether it makes sense from a fairness perspective to give an IPR petitioner 5 bites at the same apple. I have been expecting this one. Continue Reading PTAB Pushes Back on Redundant Filings of Same Petitioner

Thursday Webinar Addresses Parallel Post-Grant Proceedings

This Thursday, April 25th, from noon to 1 p.m. ET, the Patent Trial and Appeal Board (PTAB) and the Central Reexamination Unit (CRU) will host a Boardside Chat webinar presenting information on the interplay of AIA trial proceedings under the America Invents Act (AIA), reissue applications, and reexamination proceedings. Deputy Chief Judge Jacqueline Bonilla, CRU Director John Cottingham, and Judge Jason Repko will present.

The webinar will address the notice recently published in the Federal Register on the interplay between AIA trials, reissue and reexamination. Additionally, the webinar will discuss a parallel proceedings study being conducted by the USPTO that explores the interactions and overlap between AIA proceedings, reexaminations, and reissues involving issued patents. (access the webinar here)

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