Assignor Estoppel Precluded by AIA Statutes…But What of Other Equitable Defenses?

The doctrine of assignor estoppel bars the assignor of a patent from challenging the validity of the patent after it is assigned. In considering this defense to an AIA trial proceeding, the Patent Trial & Appeal Board (PTAB) had consistently held that this common-law doctrine is subject to abrogation by statute, and that the AIA statutes do exactly that. The Federal Circuit recently agreed.

However, the Board has considered and applied other equitable defenses. For example, the Board has applied waiver (prior to the Federal Circuit’s determination that tribal immunity did not apply to the PTAB). Thus, equitable defenses that do not conflict with the AIA statutes may be leveraged.

One equitable defense that could become more prominent going forward —given the alignment of claim construction standards between the PTAB and courts— is judicial estoppel.

Continue Reading Equitable Defenses at the PTAB

New Proposal May Only Amplify Current Amendment Criticisms

A few weeks back, the USPTO published a Request for Comments (RFC) (here) on a proposed procedure for motions to amend in AIA Trial Proceedings. The proposal provides for a pilot program in which the parties are provided with an initial Board assessment of the proposed amendment. The assessment is provided early in the process. The idea being to provide for a meaningful opportunity for Patent Owner’s to revise proposed amendments where appropriate.

While the agency’s effort to improve the amendment process is to be applauded, its proposal will only increase Patent Owner costs and frustrations. Continue Reading How to Fix the PTAB’s Amendment Problem

Wednesday Chat to Address Recent Changes

The Patent Trial & Appeal Board will host a special “Boardside Chat” webinar on Wednesday, Nov. 7 from noon to 1 p.m. ET. The webinar is free and open to everyone.

The program will address a variety of recent changes to procedures, including the process of paneling cases (Standard Operating Procedure 2) and the process for issuing precedential decisions (Standard Operating Procedure 1). The program will also address the claim construction standard to be applied in AIA trials, which recently changed from the broadest reasonable interpretation to the standard used in federal courts. Lastly, it will explain the proposed changes to motion to amend practice that the agency recently published in the Federal Register.

Several PTAB judges will present and be available for questions, including: Acting Chief Judge Scott Boalick, Acting Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Tim Fink, and Vice Chief Judge Scott Weidenfeller. (access here)

Pilot Program Would Provide for Separate Briefing and Board Feedback

The USPTO has published a Request for Comments (RFC) (here) on a proposed procedure for motions to amend in AIA Trial Proceedings. The proposal provides for a pilot program in which the parties are provided with an initial Board assessment of the proposed amendment. The assessment is provided early in the process; providing meaningful opportunity to revise and oppose proposed amendments; and ensuring the amendment process concludes within the 12-month statutory timeline.

Specifically, the USPTO seeks public input on a proposed amendment process that would involve a preliminary non-binding decision by PTAB regarding the merits of a motion to amend. Continue Reading PTAB Proposes Changes to Amendment Practice

PTAB Webinars this Wednesday

The October edition of the PatentsPostGrant.com webinar series will be held this Wednesday October 24th @ 1-2PM (EST).  The October program is entitled Adapting to the New Patent Trial & Appeal Board (PTAB).  This month’s program will include special guest Jonathan Bowser, Senior Patent Counsel for Unified Patents and will explore a host of changes, trends and expected shifts in PTAB and parallel litigation strategies for both petitioners and patent owners.

Free Registration: (here)

Later that same afternoon, @ 3PM (EST), PLI will host a one hour debrief entitled: The Reinvention of the Patent Trial & Appeal Board. This program will view the current political landscape of the agency and how that may impact further changes and existing practices before the Board, as well as legislative initiatives.

Register: (here)

I hope you are able to join me at one of these upcoming programs.

ITC Staff Attorney Not Bound by Estoppel

Plaintiffs are painfully aware of the Patent Trial & Appeal Board (PTAB) and its potential to derail a patent litigation. Indeed, post-SAS patent owners facing motions to stay pending PTAB review are left with even less to argue. Even where a stay is avoided, the speed of the PTAB can undermine traditional litigation pressure points that traditionally drove parties to settlement (e.g., Markman). As such, plaintiffs are increasingly viewing the International Trade Commission (ITC) as the strongest foil to a PTAB attack.

The ITC, having its own mandate for speed does not stay pending PTAB review.  Likewise, an ITC Exclusion Order can be issued within the same time frame as a PTAB Final Written Decision, or faster. These advantages are not insignificant in today’s patent monetization landscape. But, the ITC is not without its PTAB trade-offs for Patent Owners.

Continue Reading PTAB Estoppel May Not Stick at ITC

Leveraging PTAB 101 Determinations in Parallel Litigation

Covered Business Method (CBM) challenges have fallen out of favor with petitioners. This is due to a number of factors, not the least of which is the narrowing of CBM jurisdiction after Unwired Planet. Of course, this 101 challenge option will go away shortly as CBM will sunset in 2020. But, as more patents become eligible for Post Grant Review (PGR), the ability to challenge patent eligibility under 35 U.S.C. § 101 is slowly expanding to all patents.

Given the expanding option to file a PGR to challenge patent eligibility under 101 alongside art-based challenges, is it better to do so (if possible within the 9-month PGR window), or to simply wait out the 9-month window for Inter Partes Review (IPR)?

While 101 challenges can be especially lethal post-Alice, parallel tracking your 101 case at the Patent Trial & Appeal Board (PTAB) is not without its risks. Continue Reading 101 PTAB Challenges Might Come Back to Haunt Your Parallel Litigation

PTAB CLE Address Recalibration of Board Trial Practices

A few Patent Trial & Appeal Board (PTAB) related CLEs in October, all of which offer differing perspectives and topics.

First up is the IPO Chat Channel. This Wednesday October 17th @ 2-3PM EST, I, along with my co-panelists, will explore the impact of the PTAB’s switch from BRI to Phillips in a program entitled: A Surge to the PTAB? Filing and Litigation Strategy in the Light of the Upcoming Change to the Phillips Standard

Register: (here).  

Next week, there are two programs on Wednesday October 24th.

First, the October edition of the PatentsPostGrant.com webinar series will be held @ 1-2PM EST, entitled Adapting to the New Patent Trial & Appeal Board (PTAB).  This months program will include special guest Jonathan Bowser, Senior Patent Counsel for Unified Patents and will explore a host of changes, trends and expected shifts in PTAB and parallel litigation strategies for both petitioners and patent owners.

Register: (here)

Finally, also on Wednesday October 24th @ 3PM (EST), PLI will host a one hour debrief entitled: The Reinvention of the Patent Trial & Appeal Board. This program will view the current political landscape of the agency and how that may impact further changes and existing practices before the Board, as well as legislative initiatives.

Register: (here)

I hope you are able to join me at one of these upcoming programs.

Invalidity Contentions Serve as Estoppel Benchmark

A Patent Owner may only avail itself of an IPR estoppel defense in court upon demonstrating that a competent prior art search would have uncovered the art that is asserted post-IPR (i.e., raised or reasonably could have raised during the IPR. 35 U.S.C. § 315(e)(2))  This demonstration of proof can be complicated by a number of factual questions such as the degree of skill of the searcher, the complexity of the art, and what was known by the petitioner and when.

A recent decision in the Southern District of Texas looks to simplify such disputes by utilizing invalidity contentions as estoppel markers.  Continue Reading Invalidity Contentions as IPR Estoppel Markers

Final Rule Publishes Tomorrow

As predicted last week, the final rule package to switch the to the Phillips claim construction for AIA trial proceedings at the Patent Trial & Appeal Board (PTAB) will publish Thursday. (advanced copy here). The change will apply to inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) proceedings before the PTAB.

The final rule replaces the “broadest reasonable interpretation” standard with the federal court claim construction standard that is used to construe a claim in a civil action under 35 U.S.C. § 282(b). This is the same claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Additionally, under the final rule, when construing a claim term in an IPR, PGR, or CBM, the PTAB will take into consideration any prior claim construction determination that has been made in a civil action, or a proceeding before the International Trade Commission (ITC), if that prior claim construction is timely made of record in that IPR, PGR, or CBM.  The weight accorded to such determinations will vary depending upon circumstances.

The final rule will not be retroactively applied and instead will apply only to IPR, PGR, and CBM petitions filed on or after the effective date of the final rule, which is Nov. 13th, 2018.