Virtual CLE Program January 24 – 27th

IPWatchdog’s PTAB Masters 2022 (PTAB-palooza if you prefer), is coming next week!

The free, 4-day CLE program is virtual, and will focus on the PTAB from the viewpoint of both the patent owner and petitioners challenging patents.  Topics will explore political and legislative developments impacting the agency in addition to  important issues facing the PTAB.  From discretionary denials and parallel litigation, through PTAB trial tactics and strategies, this program will address the real world issues facing stakeholders by presenting best practices, expert insights, and master level planning.

Opening Remarks by Senator Tom Tillis, Keynote by former USPTO Director Andrei Iancu.

Full agenda (here) Program begins at 10:30AM(EST) Monday – Thursday (one hour break at 12 PM (EST ) and 2PM (EST) every day).

Register (here)

Amendment Based Estoppel at PTAB?

Remember the Doctrine of Equivalents (DOE)?

DOE was that folksy doctrine that allowed some wiggle room in proving patent infringement where a claim term was not literally met.  That is, DOE allows a patent owner to reach an equivalent claim element functioning in the same way, to achieve the same result that is utilized to side-step the literal claim language.  DOE is the type of legal argument that litigators live for.  Unfortunately, the doctrine was all but laid to rest decades ago in the Supreme Court’s Festo decision as most prosecution changes will foreclose DOE.  Still, there is an occasional throwback case that attempts to litigate DOE.

Most recently, Columbia University faced a summary judgment motion arguing that its DOE-based assertion was precluded by amendment based estoppel — as a result of PTAB claim cancellation alone. Continue Reading Cancelling Claims at the PTAB & The Doctrine of Equivalents

The Check is in the Mail!

Not much exciting going on at the PTAB until the new Director arrives in a few weeks.  But, there was at least one new POP decision that is worth mentioning.

In Toshiba America Electronic Components, Inc. v. Monument Peak Ventures, LLC the Precedential Opinion Panel (POP) held that payment for an AIA trial petition is effective when received by the Treasury.  I know, I know…try to contain your excitement. Continue Reading PTAB Finds Wire Payment Effective When Received by Treasury

VLSI Requests Open Sky Rehearing

PTAB discretionary practices under 314(a) have been the subject of significant controversy and unpredictability. Perhaps the most noteworthy example of the fallout from this practice has been the dispute between VLSI and Intel.  When Intel challenged VLSI’s patents at the PTAB via IPR, due to the proximity of the Texas trial date, the IPRs were denied by the PTAB as a matter of 314(a) discretion. Thereafter, a $2+ Billion judgment was entered by the Texas court.

It wasn’t long after the big verdict before profiteers formed — with no competing trial date or interest in the patents aside from a potential pay day.  Refiling the very same Intel arguments and evidence with the PTAB, at least one filer, Open Sky Industries, succeeded where Intel failed.  Presumably, hoping that the IPR institution leverage (or threat thereof) would lead to a quick settlement with VLSI.

Now the agency has a public relations mess on its hands.

Continue Reading POP Panel to Consider Profiteers Gaming PTAB

Stark and Vidal Nominations Head to Finish Line

Tomorrow morning, the Senate Judiciary will pass the nominations of Leonard P. Stark to be United States Circuit Judge for the Federal Circuit, and Katherine Vidal to be Under Secretary of Commerce for Intellectual Property & Director of the United States Patent and Trademark Office, to the Senate floor for final vote.  Neither have garnered any meaningful opposition that would result in a negative vote.  While Senator Tillis was initially hesitant to endorse Vidal due to her perceived interest in reversing PTAB policies established under former Director Iancu, Tillis announced today that he is in favor of her nomination, explaining (here):

Thanks to Director Iancu’s leadership, the PTAB now protects small businesses and has finally achieved the balance Congress intended when we passed the America Invents Act.

I’ve been clear from the beginning that any nominee for USPTO Director must commit to continuing and building upon these reforms to receive my vote. During Kathi Vidal’s confirmation hearing and in questions for the record, I asked tough questions on her views regarding these reforms and sought a simple yes or no commitment on if she would continue them. After reviewing her answers and talking with her one-on-one, I’m happy to say I’ve received such a commitment.

With bipartisan support from Tillis and Leahy, Vidal will be passed out of Committee to a floor vote.  The floor vote is fairly pro-forma for agencies such as the USPTO.

Vidal’s “commitment” to Tillis is hardly a sacrifice.  Tillis himself has openly advocated for the PTAB to recalibrate its 314(a) practices given the “unrealistic” trial schedules in place in the WDTX.  Making that change alone would allow for 314(a) practices to continue, but watered down to the point where it is a far less pronounced concern for petitioners.  As explained in December, I expect more incremental changes along these lines from the new Director.  There is simply no need to walk back Iancu policies altogether.  Indeed, with proposed legislation and an APA lawsuit pending that each seek to outlaw 314(a) practices, that eventuality may very well come to pass independent of Ms. Vidal’s efforts.

Happy New Year!

Tis the Season for Retrospectives….fa la la la la la la la la

This year I posted my top 2021 PTAB developments over at IPWatchdog. You can find it here Patent Trial and Appeal Board Year in Review: The Top Five PTAB Developments of 2021

For a more in depth discussion of these issues, and the expected impact on the PTAB in 2022 and beyond, don’t miss IPWatchdog’s  PTAB Masters January 24th-27th

Happy New Year!

Director Vidal 2022

The Senate Judiciary vetted USPTO Director Nominee Kathy Vidal earlier this month.  Not surprisingly, the hearing was fairly uneventful (even for uber-geeks, like myself).  With a confirmation vote looming, some final written materials have been submitted by Ms. Vidal that are similarly generic in espousing any particular viewpoint that could be labeled as “pro-patent” or “anti-patent.”  That said, reading the tea-leaves, there are some PTAB developments that seem inevitable for 2022 given the current landscape. Continue Reading Expect Slight PTAB Adjustments From the New Director in 2022

CAFC & USPTO Director Nomination Hearings

At 10AM today, the Senate Judiciary Committee will hold nomination hearings for Leonard P. Stark to be United States Circuit Judge for the Federal Circuit, and Katherine Vidal to be Under Secretary of Commerce for Intellectual Property & Director of the United States Patent and Trademark Office.  It appears that Judge Stark is up first on Panel 1.  Panel 2 follows with district court nominations, and Ms. Vidal.

Watch live (here)

Don’t expect any of the exchanges to be all that insightful, or confrontational.  It will be the usual qualified, non-answers and occasional softball question.  There seems to be some expectations that Ms. Vidal will be grilled over her view of discretionary PTAB practices, don’t count on it.  While I am sure the topic will be raised, it’s far too esoteric an issue to stall a nomination to an agency of little interest to the general voting public.  And, Ms. Vidal is certainly smart enough to toe the line.  That said, given the vocal support of Leahy for the Director nominee, and the less than enthusiastic reception of Tillis, its not hard to read the PTAB tea leaves.

Both nominations appear primed for confirmation.

Upcoming PTAB CLE

ACI’s inaugural “PTAB Briefing” arrives in two weeks.  The program will provide an in depth-discussions and year-end analysis of the most significant developments impacting PTAB practice as well as future forecasts for 2022.

I will be speaking on the panel entitled: Think Tank: Recent Developments & the Future Direction of IPR ProceedingsThis panel will cover pending legislative initiatives, possible impact of the new Director, and expected practice changes to come.  I hope to see you there.

Inbox me if you would like a free pass to the program.

Appeal Bar Deemed to Bar APA Suit

Back in September of 2020, a number of large tech companies sued the USPTO for violating the APA by denying IPR petitions on the basis of a competing trial date. More specifically, the suit argued that the so-called NHK-Fintiv practice — implemented without notice and comment rulemaking — was in violation of established APA practices.  Since filing, the Court seemed quite interested in that argument at an earlier oral hearing on summary judgment.  Oddly, the case was dismissed yesterday based upon the 314(d) appeal bar.

Continue Reading NHK-Fintiv APA Suit Ends Abruptly