Pending Cases to Revisit Pruned Claims/Grounds

Today the Patent Trial & Appeal Board (PTAB) issued guidance on the impact of SAS on AIA trial proceedings. The guidance explains that:

[F]or pending trials in which a panel has
instituted trial only on some of the challenges raised in the petition (as opposed to all challenges raised in the petition), the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition. … ¶ [F]or pending trials . . . the panel may take further action to manage the trial proceeding, including, for example, permitting additional time, briefing, discovery, and/or oral argument, depending on various circumstances and the stage of the proceeding.

You can find the full guidance (here)

Special PatentsPostGrant.Com Webinar Next Tuesday

In addition to the already scheduled webinar next Wednesday on Bio/Pharma Deals & Dispute Resolution in the PTAB Era, a special webinar entitled: Supreme Court Debrief: Oil States & SAS Institute:The Aftermath will be held on Tuesday, May 1, 2018 @ 1-2PM (EST) Register (here)

Yesterday, the Supreme Court issued opinions in both the Oil States and SAS Institute appeals. These opinions will have an immediate impact on proceedings at the Patent Trial and Appeal Board (PTAB), pending PTAB appeals to the Federal Circuit, and patent litigation strategies. The webinar will identify key takeaways from these opinions, and offer insights and discuss possible practice changes that will occur in the weeks/months ahead. Ropes & Gray speakers will be PTAB practice chair Scott McKeown, Appellate and Supreme Court practice chair Douglas Hallward-Driemeier, and patent litigator Matthew Rizzolo.

Patent Owners Will Not Like the Post-SAS PTAB

Last month, I predicted a 7-2 affirmance of Oil States (although I had Kennedy in the dissent with Gorsuch rather than Roberts). Still, the outcome of this closely watched case was hardly a surprise, nor was the content of the dissent. (here) While some will read the “narrow” holding characterization of the Oil States majority as a beacon of hope for further constitutional challenges, I don’t see that at all. Rather, I see the Court making clear that it is not indirectly endorsing any PTAB practices highlighted in the briefing, oral argument, and in the dissent — panel stacking perhaps being the most noteworthy. Going forward, I don’t see much Oil States impact at the PTAB.

SAS Institute on the other hand, will bring about some of the most significant PTAB practice changes to date. Continue Reading How the SAS Institute Ruling Will Impact PTAB Practice

April Webinar to Explore Bio/Pharma Deals & Disputes in the PTAB Era

This month’s edition of the free webinar series will be held on Wednesday May 2nd, 2018 @ 2PM. The April webinar is entitled: Bio/Pharma Deals & Dispute Resolution in the PTAB Era.

Register (here)

The emergence of the Patent Trial & Appeal Board (PTAB) as a forum for patent validity disputes has altered the business landscape of both innovator and generic companies alike. PTAB proceedings are now commonplace for Orange Book pharmaceutical patents and Purple Book biologic/biosimilar patents. An understanding of the business impact of these proceedings from both a transactional and litigation perspective is critical for successful, in-house navigation. Likewise, trends within and across these proceedings, including final patent validity outcomes, impact on traditional Hatch-Waxman procedures, types of patents (compound, formulation, method of use) involved, and the timing of challenges, are critical components to a successful litigation and portfolio development strategy.

Please join Ropes & Gray’s PTAB Chair Scott McKeown, Life Sciences IP Litigation Chair Filko Prugo, and IP Transactions Partner Melissa Rones for the upcoming webinar providing a holistic analysis of these important Bio/Pharma disputes.

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 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).

PTAB Denies Party Submissions on Remanded IPR Appeal

A successful appeal to the Federal Circuit from the Patent Trial & Appeal Board (PTAB) typically ends in vacatur and remand. As explained a few weeks back, surprisingly, the Board is not simply correcting the record on remand to maintain its earlier decision. Rather, in most cases a remand results in an eventual victory for the appealing party.

This practice gives hope to Patent Owners who may have been assuming that absent reversal, a remand was just a longer, more painful loss. Continue Reading PTAB Remands Looking More Like Eventual Wins for Patentees

One-Year Clerkship Opportunities

The PTAB has created and is hiring for a new Judicial Law Clerk Program. The PTAB modeled this program off the judicial law clerk program used in the federal courts.

Judicial law clerks will gain experience working at the PTAB for a one-year term directly with one or more administrative patent judges (APJs). Judicial law clerks will assist on cases in all jurisdictions of the PTAB, including trials under the America Invents Act and ex parte appeals. Judicial law clerk positions are available at our Alexandria headquarters and all four regional offices in Detroit, Denver, Dallas, and San Jose, California.

The judicial law clerk position currently is posted on USAJobs. Applications are due by Thursday, April 26. Interested candidates must have an engineering or science background, law degree, and bar membership in any state within 14 months of a hire date. For more information, the PTAB is hosting a free webinar on April 11 from noon to 1 p.m. ET to review the position, experience, and skills required. APJs will answer questions.

April Boardside Chat: Ex Parte Appeals

The Patent Trial & Appeal Board (PTAB) will host its next “Boardside Chat” webinar this Thursday, April 5 from noon to 1 p.m. ET. The chat will discuss “Petitionable Matters, Objectionable Matters, and New Grounds of Rejections in Ex Parte Appeals.” PTAB Judges Adriene Lepiane Hanlon, Bruce Wieder, and Anthony Knight will present and address audience questions.

Webinar Access Information for Apr. 5, 2018 at noon, E.T.: 

Click on the link:

Event/Access #:  996 735 788

Event password:  AprilChat2018

Access code: 996 735 788

New Director’s Interest in Predictability To Drive PTAB Change

As pointed out yesterday over at IPWatchdog, the USPTO Solicitor has withdrawn as Intervenor in the Federal Circuit appeal between Telebrands Corporation and Tinnus Enterprises (stemming from PGR2015-00018, challenging a patent pertaining to the well-known Bunch-o-Balloons® product on indefiniteness grounds). The USPTO intervened in the earlier appeal to defend the indefiniteness standard applied in the PGR. This is because the applied standard was stricter than that enunciated in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). The application of a different, stricter standard caught some by surprise that had not realized that the Federal Circuit endorsed that very standard for agency proceedings in In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).

I pointed out at the time of this appeal that the Packard indefiniteness standard is grounded in ex parte examination policies and practices.  As such, it was unclear whether the Court’s holding in Packard could be properly extended to AIA trial proceedings. Yet, the Solicitor’s decision to withdraw as Intervenor in the Tinnus dispute is not a sign that the agency lacks faith in its brief. Rather, the change is indicative of a new direction for PTAB trial proceedings. Continue Reading PTAB Likely to Adopt a Philips Construction for AIA Trials in 2018

Stay To Force PTAB Outside of Statutory Time Limit?

Today, the Federal Circuit issued a stay of further Patent Trial & Appeal Board (PTAB) proceedings pending the St. Regis Mohawk Tribe’s sovereign immunity appeal. The appeal challenges the Board’s determination that the Tribe is not immune from its proceedings as a sovereign entity. As a reminder, the tribe is alleged to be the new owner of Allergan patents relating to the ophthalmic Restasis®  Continue Reading CAFC Shuts Down PTAB Pending St. Regis Mohawk Tribe Appeal + IPO’s IP Chat Channel CLE This Week

I have written extensively about the threat of PTAB estoppel to established patent prosecution practices. This Thursday, I, along with my co-panelists, will explore PTAB estoppel as well as other aspects of res judicata and issue preclusion in the IPO Chat Channel program (2-3PM EST) entitled: Patent Prosecution Estoppel from PTAB Proceedings

Register: (here).  

On Wednesday, this month’s edition of the free webinar series will be held @ 2PM (EST). The March Webinar is entitled: Evolution of PTAB Trial Practices.

Register: (here)

I am looking forward to both of these programs.