PTAB Trial Practice Changes & Evolution of Parallel Litigation

Two separate webinars this week for those looking to keep abreast of PTAB evolution and related litigation practices.

First, up, this month’s edition of the PatentsPostGrant.com free webinar series will be held on Thursday, February 22nd @ 2PM (EST). Roadblock PTAB: Litigation Strategies & IPR Antidotes. Register (here)

Then, on Friday February 23rd @ 1PM (EST), join me and Rob Greene-Sterne of Sterne Kessler for PLI’s one hour briefing: PTAB Trial Practice After Wi-Fi One: Challenges and OpportunitiesThis program will explore the now softened 314(d) appeal bar and the anticipated expansion of appellate issues, as well as corresponding impacts on PTAB trial practices. Register (here)

Federal Circuit to Consider PTAB Sovereign Immunity Defense

State-affiliated entities enjoy immunity from suit in federal courts under the 11th amendment. To date, a handful of such entities have successfully leveraged the same immunity theory to avoid review of their patents before the Patent Trial & Appeal Board (PTAB). While still other Patent Owners have aligned themselves with Native American Tribes in an effort to benefit from their sovereign status in the hopes of avoiding PTAB review.

More recently, in Ericsson v. Regents of the University of Minnesota.the PTAB has determined that sovereign immunity is waived where the sovereign entity files an infringement suit. (here)

Appeal was taken from this decision this week. Continue Reading PTAB Sovereign Immunity Dispute Heads to CAFC

Divergent Technical Teachings of a Primary Reference Matter in an Obviousness Analysis

A popular counter-argument to an obviousness attack is that the primary reference of the combination “teaches away” from the proposed combination. That is, if reference (A) is proposed to be modified by the teachings of reference (B) in some manner, and reference (A) criticizes, discredits or discourages that manner of combination, then reference (A) is said to “teach away” from the combination — thus, precluding an obviousness determination on that proposed combination.

In practice however, it is a rare reference that includes a technical explanation that is so strongly worded to satisfy the teaching away standard. Yet, as the Federal Circuit made clear this week, less pronounced evidence of divergent technical teachings cannot be disregarded by the Patent Trial & Appeal Board (PTAB). Continue Reading CAFC Teaches Away on Teaching Away

February Webinar to Explore Litigation Strategies & PTAB Antidotes

This month’s edition of the PatentsPostGrant.com free webinar series will be held on Thursday, February 22nd @ 2PM (EST). The February Webinar is entitled: Roadblock PTAB: Litigation Strategies & IPR Antidotes.

Register (here)

Program Description: In the 5+ years since their inception, AIA Trial proceedings have become invaluable tools for defendants facing patent infringement claims, and thorns in the side of many patent owners. As a result, patent owners have worked hard to more effectively navigate or even altogether circumvent the PTAB. Some of the strategies in the last year, which have faced varying degrees of success, include asserting patents in fast track jurisdictions such as the International Trade Commission (ITC), raising Constitutional challenges to the PTAB’s authority, and structuring ownership to include sovereign entities to leverage sovereign immunity defenses.

The February PatentsPostgrant.com webinar is presented by R&G PTAB Practice Chair Scott McKeown & IP Litigation Counsel Matt Rizzolo who will offer their insights and experiences relating to potential “PTAB antidotes” that have been used by patent owners, and will discuss how these and other strategies and tactics may fare in 2018 and beyond.

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. Two hours 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).

Expanded Does Not Equal “Stacking”

As I explained previously, an expanded panel at the PTAB is an exceedingly rare occurrence.  But, as the Federal Circuit made clear in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.(here), on at least one occasion, PTAB panel expansion was utilized to drive uniformity on an inconsistently decided question of law (issue joinder). That is, an expanded panel was utilized to change the underlying decision in an issue joinder dispute.  PTAB critics were quick to latch onto this “panel stacking” as evidence of an anti-patent bias. This criticism was even echoed by the Supreme Court during the Oil States argument.

Since that time, the Board has continued to utilize expanded panels on issues of importance without changing the underlying result.  However, the recent panel stacking notoriety continues to haunt all expanded panel decisions.

Dispelling this perception, the Chief Judge clarified the purpose and framework of expanded panels during yesterday’s quarterly meeting of the Patent Public Advisory Committee (PPAC). Continue Reading PTAB Explains Expanded Panel Rationales

CRU Faster Than Before AIA, Provides Options for Patent Owners

Patent reexamination filings have fallen 86% since 2012.  With the elimination of the popular inter partes patent reexamination option in 2012, an overall decrease was certainly expected.  However, ex parte reexamination filings continue to drop every year.  Only 191 ex parte reexamination requests were filed in 2017.  This was the lowest number of ex parte reexamination filings since the mid-1990s.  While an ex parte patent challenge is far less appealing to a patent challenger than a contested proceeding (AIA trial proceeding), and this factor has undoubtedly contributed to the decreasing numbers, patent reexamination and other post-grant proceedings of the Central Reexamination Unit (CRU) still provide unique rehabilitation opportunities for patent owners.

Continue Reading Thwart PTAB Attacks With These USPTO Post-Grant Options

Next Week: PTAB BoardSide Chat & PatentsPostgrant.Com Webinar

Next week, brings back-to-back programs on PTAB appeals, both with a unique focus.

First, up, this month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday, January 31st @ 2PM (EST). The January Webinar is entitled: Building Winning PTAB Appeals to the Federal Circuit. The January PatentsPostgrant.com webinar is presented by R&G PTAB Practice Chair Scott McKeown & Appellate/Supreme Court Practice Chair Douglas Hallward-Driemeier who will offer their insights and experiences in building winning PTAB appeals to the Federal Circuit. Register (here). CLE credit will be provided (CA, NYC, VA).

The next day, February 1st, the USPTO will host its first bi-monthly Boardside Chat of 2018. This month’s offering is entitled: Design Patent Appeals. The chat will discuss “Design Patent Appeals and AIA Trial Proceedings.” Longtime PTAB Judges Jennifer Bisk, Romulo Delmendo, and Daniel Song will present and address audience questions. This topic is relevant for both ex parte appeal and AIA trial proceedings.

The Boardside Chat is free and open to everyone to attend. More information, including the WebEx access information, can be found at the PTAB “Boardside Chat” Webinar Series webpage (here).

Patentee Estoppel Can Shut Down Related Prosecution

Patent prosecutors might consider PTAB estoppel a pure post-grant concern. That is, a litigation issue restricted to district courts after a failed PTAB challenge, or an issue raised in the context of a second-bite at the PTAB apple. But, PTAB estoppel can effect both failed petitioners and unsuccessful patent owners. Patent owner estoppel, often overlooked, is only now beginning to impact patent prosecution.

Prosecutors beware. Continue Reading The PTAB Estoppel Keeping Patent Prosecutors Awake at Night

WiFi One Opens the Door to Reconsideration of Well-Established PTAB Precedent

The Federal Circuit’s softening of the appeal bar (35 U.S.C. § 314(d)) in WiFi One will now allow the Court to consider matters unrelated to the merits of an institution decision, and in some cases, well-established precedent of the Patent Trial & Appeal Board (PTAB).

For example, in Oracle Corp. v. Click-to-Call Techs. LP Case IPR2013-00312, Paper 26 (Oct. 30, 2013), Section (III.A) was designated precedential.  This section explains that the dismissal of a lawsuit “without prejudice” nullifies the service of the complaint relative to 35 U.S.C. § 315(b).  The Federal Circuit announced last Friday that it can now consider this precedent, post WiFi One.

Continue Reading CAFC to Consider Popular IPR Time Bar Exception

January Webinar to Focus on PTAB Appeals to the CAFC

This month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday January 31st @ 2PM (EST). The January Webinar is entitled: Building Winning PTAB Appeals to the Federal Circuit. With the Federal Circuit’s affirmance rate for PTAB appeals hovering at around 70%, and with such appeals approaching 50% of the Federal Circuit’s docket, successful appellate advocates must not only stand out from the crowd, but build winning trial records from Day 1. This task is easier said than done with the accelerated pace of PTAB trials, limited discovery, and recent recalibration of the appeal bar in Wi-Fi One v. Broadcom.

The January PatentsPostgrant.com webinar is presented by R&G PTAB Practice Chair Scott McKeown & Appellate/Supreme Court Practice Chair Douglas Hallward-Driemeier who will offer their insights and experiences in  building winning PTAB appeals to the Federal Circuit. Register (here)

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. Two hours 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).