NPRM to Codify Existing Practices with Notable Exception

The United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking today to update its rules to conform to SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).  That is, the rules now follow the holding of SAS to institute an AIA trial proceeding on all challenged claims should the petitioner meet its burden for at least one challenged claim.  Additional include other rule based updates to codify practices introduced by changes to the Trial Practice Guide, such as providing for sur-replies to principal briefs and providing that a patent owner response and reply may respond to a decision on institution.

None of the above rules change existing practices, but the USPTO did offer one notable wrinkle in its Federal Register Notice. Continue Reading PTAB Proposes New Rule Package – and New Preliminary Proceeding Philosophy

PTAB Appeals Focused on Merits

The SCOTUS re-calibrated the PTAB’s appeal bar in Thryv, Inc v. Click-To-Call Techs., LP., explaining that potential violations of 35 U.S.C. § 315(b) were too closely related to the institution determination of the agency to escape the appeal bar.  Since that time, the Federal Circuit has considered at least two additional issues that it may no longer have the ability to consider on appeal: RPI/privity disputes, and determinations that a patent qualifies as a Covered Business Method (CBM) patent.

As to RPI/privity, those disputes are now barred from appeal. Continue Reading Thryv Continues to Simplify CAFC Appeal Docket

PTAB Webinar 12-1PM (EST) This Thursday

As discussed a few weeks back, the USPTO launched the Patent Trial and Appeal Board’s (PTAB) Legal Experience and Advancement Program (LEAP). LEAP is designed to foster development of the next generation of patent practitioners by creating opportunities to gain the proper skills and experience in oral arguments before the Board.

To this end, the PTAB is offering the first LEAP webinar training on oral advocacy this Thursday, May 14, from noon to 1 p.m. ET.

LEAP is designed to encourage the professional development of patent attorneys and agents appearing before the PTAB through increased opportunities for oral advocacy in ex parte appeal and AIA trial proceedings. Accordingly, the PTAB will grant up to 15 minutes additional argument time to parties that choose to participate in LEAP, depending on the length of the proceeding and the PTAB’s hearing schedule.

Judges on the webinar will offer training on oral advocacy to help prepare LEAP practitioners to argue before the Board. The training will cover topics such as use of demonstratives, effective use of hearing time, decorum, and logistics of an oral hearing.  Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Janet Gongola, Lead Judge Stacey White, and Judges Amanda Wieker and Christa Zado will present.

The webinar is free and open to all. There will be a Q&A session at the end.

Questions may be in advance or during the webinar to LEAP@uspto.gov. Webinar access information is found (here).

Deciding Between PTAB & District Court Venues for 112 Challenges

With an increasing number of issued patents eligible for Post Grant Review (PGR), patent challengers find themselves assessing whether PGR is worth the added estoppel risk.  That is, where a first-inventor-to-file patent is still within 9-months of issuance (PGR window), should a challenger opt for PGR, or await the availability of IPR after the 9th month?

As with many legal questions, the answer is —”it depends.” Continue Reading PGR May Be The Place For Your 112 Case

Apple Factors Added to NHK Mix

A few weeks back I highlighted the fact that the Patent Trial & Appeal Board (PTAB) was in the process of considering a more nuanced approach to NHK determinations.  That is, with a few Board decisions seemingly denying IPR trial institutions on the sole basis of a competing, and earlier district court trial date, the Board was considering whether its approach had become too rigid.

Today, the Board designated as precedential the supplemental briefing order in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (March 20, 2020), which lists six factors to be assessed in such scenarios. Continue Reading PTAB Adds Factors to Assess Import of Competing Trial Date

Denial of Institution Sinks Materiality Allegation

Inequitable conduct is an equitable defense to patent infringement that, if proved, bars enforcement of a patent. The standard for inequitable conduct was recalibrated in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011).  To prevail on the defense of inequitable conduct, an alleged infringer must demonstrate two elements—materiality and intent.  That is, demonstrate that the patent applicant misrepresented or omitted material information with the specific intent to deceive the PTO.  Materiality of information changed from the previous “reasonable examiner” standard to “but-for” materiality in Therasense.

Of course, the best way to prove such materiality is to demonstrate that the PTO is in the process of reconsidering its earlier decision based on this same prior art. Continue Reading Therasense “But For” Materiality Mooted by IPR Loss

Remands Held in Abeyance Until Arthrex Exhausts Appeals

Last Friday, the Chief Judge of the Patent Trial & Appeal Board (PTAB) issued a general order directed to the growing number of Arthrex remands, now totaling over 100 cases. The order (here) explains:

Several parties in Board matters that have been subject to [remand Orders] have informed the Office that they intend to seek review of the pertinent Order by the Supreme Court of the United States (“Supreme Court”). Meanwhile, in accordance with the Board’s Standard Operating Procedure 9 (“SOP 9”), parties are contacting the Board to schedule teleconferences with the appropriate Board panel in their proceeding. To avoid burdening the Office and the parties until all appellate rights have been exhausted, I exercise my discretion to: (1) suspend the requirements in SOP 9 in cases remanded by the Federal Circuit under Arthrex; and (2) hold all such cases in administrative abeyance until the Supreme Court acts on a petition for certiorari or the time for filing such petitions expires.

This Order will delay new hearings in these cases for the summer (if certiorari is ultimately  denied), or well into 2021 if the SCOTUS takes up the case.

IPO Chat Channel & AIPLA Virtual Spring Meeting Next Week

For those seeking CLE in the coming weeks, there are two programs on the immediate horizon.

First, next week kicks off the AIPLA’s Virtual Spring Meeting.  The program (spaced over two weeks) offers a host of IP related presentations, including Practice Tips and Procedural Developments at the PTAB on Tuesday May 5th from 12:30-2PM (EST).  Sub-topics include:

  • So the Federal Circuit Remanded Your Case Back to the PTAB; 
  • PTAB Opinions on Discretionary Institution; 
  • What You Need to Know about Recent Changes in AIA Trial Proceedings; and
  • Winning Strategies on What to Argue Before the PTAB.

Second, the IPO Chat Channel will host Defining the PTAB: Click to Call and Windy City next Thursday at  Thursday, May 7th, 2-3pm (EST) This program will explore the impact of new appellate realities in PTAB proceedings and the relevance of POP decisions in this new environment.

Patent & Trademark Due Dates Pushed to 6/1

Not surprisingly, the United States Patent and Trademark Office (USPTO) again extended the time to file certain patent and trademark-related documents and to pay certain required fees, which otherwise would have been due between March 27 and May 31, to June 1, 2020.  This is in addition to the prior extension the USPTO had announced on March 31, 2020 in accordance with the temporary authority provided by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act).

The limited relief provided for PTAB trial proceedings under the March 31st notice ends on April 30th.  Relief sought thereafter will be determined on a case-by-case basis.

The recent notice also makes clear that to take advantage of the waiver of the petition to revive fee (announced on March 16th) that the abandonment, termination or limiting, must occur prior to May 31, 2020.

The patent notice is found (here) trademark notice (here).

LEAP Program Launches 5/15

Today, the USPTO officially launched the Patent Trial and Appeal Board’s (PTAB) Legal Experience and Advancement Program (LEAP). LEAP is designed to foster development of the next generation of patent practitioners by creating opportunities to gain the proper skills and experience in oral arguments before the Board. The USPTO explains that it understands “stand up” speaking opportunities before tribunals are limited and that gaining courtroom experience is advantageous for practitioners in their career development.

A LEAP practitioner is defined as someone who is new to the practice of law or new to practice before the PTAB.  To qualify as a LEAP practitioner, a patent agent or attorney must have three or fewer substantive oral arguments in any federal tribunal, including PTAB, and seven or fewer years of experience as a licensed attorney or agent.  Continue Reading PTAB Offers Expanded Oral Argument Times to New Attorneys