Court Takes Issue with DJ Filing Prior to IPR

Patent infringement defendants seek IPR of patents asserted against them at the PTAB as an alternative to higher cost litigation. That is, a primary benefit of seeking IPR is the ability to seek a stay of the costlier district court action on the basis that the outcome of the IPR may moot the dispute through cancellation of the asserted claims, or at least greatly simplify the issues for trial.

Yet, not all patent litigation is initiated by patent owners. Often times a potential defendant will seek a Declaratory Judgment (DJ) to secure a favored district court forum in anticipation of an imminent litigation in a less favorable district (typically Texas)

Recently, the District of Delaware considered the impact of such proactive conduct on the typical IPR stay analysis.

Continue Reading PTAB Stay Calculus Considers DJ History

Scope of Estoppel Considered for Review

IPR estoppel is defined by 35 U.S.C. 315(e). The statute recites in relevant part that any claim subject to a failed IPR may not be argued by that petitioner in an infringement action as “invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 315(e)(2)

While there has been much debate in the lower courts as to the scope of “reasonably could have raised,” and even “ground,” the debate currently before the SCOTUS in Apple et al., v. California Institute of Technology turns on the meaning of “during.” That is, whether “reasonably could have raised” is assessed at the time the petition is drafted, or, during the actual proceeding. If estoppel is determined at the outset of petition drafting that scope is far broader than what could be added to an ongoing IPR proceeding (i.e., next to nothing).

Should this question ultimately taken up, the outcome could have significant consequences.

Continue Reading SCOTUS Seeks Gov’t Input on IPR Estoppel

Would a “Mini-Markman” Have Helped Patent Owners?

A long time ago, in a galaxy, far, far away….the Patent Trial & Appeal Board (PTAB) considered implementing a Markman style claim construction procedure it labeled a “Mini-Markman.” The idea, along with others was the result of a 2015-16 listening tour conducted by the agency under former USPTO Director Michelle Lee. The listening tour stopped at several locations across the U.S. to collect public feedback on AIA trial proceedings. The tour culminated in a draft rule package that contained a number of interesting ideas. Needless to say, that rule package was abandoned and never saw the light of day (for reasons unknown)

As we move into the new year and look forward to coming PTAB rule packages on discretionary denials and rehearing practices, I revisit this old idea in view of the never ending dialog on reforming the PTAB.

Continue Reading The Long Lost PTAB Markman Plan

2-Day Program Offers Comprehensive View

For those looking for some PTAB related CLE (hello, who isn’t !?), consider the upcoming PTAB Masters program Jan. 31 – Feb. 1. The third annual program is designed as a high-level, interactive, limited enrollment program, and is held in person at IPWatchdog Studios, minutes from Dulles International Airport. The program (agenda here) will not only cover PTAB centric topics, but related litigation, appeals to the Federal Circuit, monetization impacts, and patent portfolio development issues. The program including a the former Chief Judge of the CAFC, former USPTO Director, top practitioners, and current and former PTAB judges (list here)

I look forward to seeing everyone n 2023!

Register (here)

Re-work Frustrates Patent Owners & The System

I have written about Patent Owner estoppel for years. That is, estoppel stemming from claims cancelled in PTAB trial proceedings. This estoppel is based on the idea that, if you have an amendment to bring to a given claim set, you should bring that amendment during the trial — not thereafter, such as in a patent reissue, reexamination or continuation application.

Rule 42.73 (d)(3)(i) explains that a Patent Applicant or a Patent Owner is precluded from taking action inconsistent with a claim cancellation, including, obtaining in any patent a claim that is not patentably distinct from a finally refused or cancelled claim. But, it is fairly common for unsuccessful Patent Owners to go right back after a PTAB loss and pursue substantively identical claims through patent reissue or reexamination. Why?

Patent Owners are not gluttons for punishment, they are just following the directions of the agency.

Continue Reading PTAB Estoppel is Confused By the USPTO

IPWatchdog to Close Out Year with PTAB Update

Join me this Tuesday, December 13, 2022, at 12 PM ET, as IPWatchdog looks toward the end of the year, This PTAB specific panel will take a look back on the major PTAB developments from 2022, the changes to the PTAB ushered in by Director Vidal, as well as the potential for legislative reforms and rulemaking in 2023.

We will also preview the PTAB Masters ’23 topics for next January!

Free registration here

Bad Counsel, Bad Strategies, or Both?

We are now a full decade into PTAB practice. Yet, many Patent Owners still continue to shoot themselves in the foot when it comes to litigating at the PTAB. When representing a Petitioner, I don’t think I have ever been involved in a case where the Patent Owner hasn’t overlooked its best argument in some respect, or buried it in a heap of weak and/or “dead on arrival” arguments that provide no value aside from undermining the PO’s credibility.

Why is that?

I think there are a number of factors driving this behavior.

Continue Reading Why Do Patent Owners Keep Making the Same PTAB Mistakes?

CAFC Clarifies Role of PTAB Disclaimer

Over the years, whether patent reexamination, patent reissue or AIA trial, patent owners have attempted to amend their claims through argument alone. Typically a Patent Owner would argue that its claims means something specific, and that by affirmatively saying so in the post-grant prosecution history, the claims should be interpreted as such by virtue of disavowal/disclaimer. The reasoning is that since such a disclaimer/disavowal would have been recognized for such in the original prosecution, why should it be any different in a post-grant setting?

Today, the CAFC has finally shut down that argument as being inconsistent with patent statutes and the AIA amendment policies.

Continue Reading Amendment by Argument at the PTAB?

Program Offers Unique Opportunity to Bar

On Wednesday, November 9th (10AM – Noon (EST)), the Patent Trial and Appeal Board’s (PTAB) Legal Experience and Advancement Program (LEAP) will host its brand new event, LEAP to Chambers.

LEAP to Chambers provides LEAP-eligible practitioners an inside perspective on practicing before PTAB. LEAPers will visit the Alexandria, Virginia, office for a PTAB judge-guided tour of PTAB’s facilities. LEAPers also learn oral and written advocacy tips from PTAB judges. Visit the Legal Experience and Advancement Program (LEAP) for more information about the LEAP program.

Be sure to register (here) by Friday, October 28th.

Ending Opensky IPR Participation Underwhelming

Back in March, I explained that the Opensky mess needed to be immediately checked by the USPTO. The legitimacy of the PTAB is at stake when when profiteers are actively conspiring to abuse the IPR process by offering to deliberately file papers for an improper purposes. The situation called for swift and decisive correction…..but this is the federal government. So, we waited for a new Director to be appointed, and then, largely unnecessary amicus briefing for such a unique fact pattern.

Six months later (IPR is effectively done except for the Final Written Decision), we finally have a determination out of the Director. But, the outcome is far from satisfying for anyone that is hoping for the PTAB to start policing bad actors akin to an Article III Court.

Continue Reading Its Time for the PTAB to Stop Playing Good Cop