The Return of In-Person IP Conferences

In the words of princess Elsa…for the first time in forever.…there are a number of in-person IP conferences slated for this fall. (I’ve been cooped up with kids, I make Frozen references now)

First up is IPWatchdog Live 2021 September 12-14 in Dallas, Texas. The multi-day IPWatchdog program includes an impressive roster of speakers and topics.  Kicking off the program on Sunday will be the Honorable Alan D. Albright of  U.S. District Court for the Western District of Texas. Monday and Tuesday will cover a host of IP related topics (agenda), including patent monetization, the PTAB, litigating in Texas, Patent Monetization, Trade Secrets at the ITC, SEPs, as well as Trademark & Copyright topics.

See you in Texas!

Court Holds Fact Finders May Compare Document Versions

Over the years, the Federal Circuit has faulted the PTAB for overly rigid printed publication analysis.  A recent Federal Circuit decision has provided further guidance on how the PTAB should determine what constitutes prior art in AIA trial proceedings, especially as it relates to the duties of a fact finder. Continue Reading PTAB Faulted on Rigid Printed Publication Analysis

CAFC Says “No”…Ninth Circuit Says “Yes”

Under 35 U.S.C. § 285, a prevailing party in a patent infringement dispute may be awarded reasonable attorney fees in “exceptional cases.” I’ve previously discussed the contours of what constitutes an “exceptional” case based upon earlier cases. In 2018, the Central District of California awarded attorney’s fees stemming from a parallel PTAB proceeding, and in 2019 a Michigan court held that conduct at the PTAB may even be permissible as being the sole basis for fees in parallel district court proceedings. Most recently, however, based upon the guidance of the Federal Circuit, 285 has not been extended to attorney fees incurred during a PTAB proceeding. Continue Reading Circuits Split on PTAB Fees Being Recoverable Under 285

Study Shows Bio/Pharma Patents Fare Better at PTAB

A few years back, the Patent Trial & Appeal Board (PTAB) released a study showing the outcome of proceedings directed to so-called “Orange Book” patents. That study demonstrated that Orange book/Biologic patents were more likely to survive PTAB proceedings relative to other patents. Last week, the 2018 study was updated.

The update shows the performance of Orange Book/Biologic patents at the PTAB since 2012. Continue Reading Bio/Pharma Patents Fare Best at PTAB

Settlement Prior to Trial Institution May Not Require Filing of Settlement Documents

Back in 2015, I pointed out that an opinion of the Federal Circuit called into question the PTAB’s practice of requiring settlement documents to terminate an AIA trial preliminary proceeding. I reasoned that as the Federal Circuit interpreted “proceeding” as written in the AIA statutes as not including a preliminary proceeding in Intellectual Ventures II LLC v. JPMorgan Chase & Co. (here), that this statutory construction could impact pre-institution, settlement procedures.

All these years later, the Board has now been asked to consider the issue. Continue Reading PTAB Changes Settlement Requirements?

Director Adopts Panel Opinion

A few weeks back, I explained that the new Arthrex rehearing option— to the Director of the USPTO —was a non-event for practitioners. Reason being, the Director cannot just unilaterally reverse decisions “just because” he/she likes or dislikes patents.  Of course, any such decision would be reviewable on appeal by the Federal Circuit.

While I was initially concerned with such filings piling up during the tenure of an Acting Director, the Acting Director is able to perform these duties (and issue patents) for a limited period of time while a politically appointed Director is seated.  At least for now, that is how such rehearings will be decided.

Yesterday, the Acting Director issued his first two decisions, adopting the panel decisions in each as the final decision of the agency. Continue Reading Director Rehearing Decisions: No Path for Delay

Unpacking the Importance of the Claimed Invention from Other Commercial Components

Objective indicia of non-obviousness, such as commercial success and industry praise, can be probative evidence of non-obviousness. In order for the objective evidence of secondary considerations to be afforded substantial weight, however, the patentee must establish a nexus between the evidence and the merits of the claimed invention.  A presumption of nexus can be established if the patentee shows that the evidence is tied to a specific product that embodies the claimed invention.

Of course, the challenger can rebut the presumption of nexus by showing that the commercial success or industry praise is due to features other than the claimed invention. But, this rebuttal may not be so straightforward where the claimed invention is a tool of a multi-tool package.  In this instance, the inventive component must be weighed, regardless of the popularity/success of other components.  Continue Reading PTAB Faulted on Objective Indicia Analysis

What is “Materially Identical?”

The doctrine of issue preclusion can prevent an issue previously litigated at the PTAB from being re-litigated in a later proceeding, such as in the district court. In order for issue preclusion to apply, a “materially identical” issue must have been “actually litigated and determined by a valid and final judgment,” where the determination was “essential to the judgment.” See Papst Licensing GMBH & Co. KG v. Samsung Elecs. Am., Inc., 924 F.3d 1243, 1252 (Fed. Cir. 2019). Thus, once appeals have been exhausted, the determinations in a FWD from the PTAB may have preclusive effect in future actions, even on related patents so long as they raise “materially identical” issues.

Which begs the question: What is the scope of materially identical? Continue Reading PTAB Decisions & Issue Preclusion

Arthrex Information Updated

The USPTO requested feedback on the interim Director review process and, in response to that feedback, has updated the Arthrex Q&As. In response to questions from the public, the current update revises several existing Q&As and adds new Q&As to clarify certain aspects of the interim Director review process. For example, the current update clarifies information about party requests and explains the process used internally at the Office. Continue Reading PTAB Clarifies Director Rehearing Details

FWD Statutory Estoppel vs. Collateral Estoppel

In designing the America Invents Act (AIA), statutory estoppel of 35 U.S.C. § 315(e)(2) was set to by legislators to attach at the time of the PTAB’s Final Written Decision (FWD).  This is despite the fact that further appeals are routine.  This statutory design was responsive to the previous criticism of inter partes reexamination estoppel, which attached only after all appeals were exhausted.

Yet, this statutory design often puts district courts in the unenviable position of treating an otherwise non-final decision, as final……at least with respect to petitioner estoppel.  As to claims that may be cancelled in the same FWD, courts are free to await further appeals.

This unbalanced scenario can be exploited by Patent Owners. Continue Reading Patent Owner Uses FWD Cancelling Claims as a Sword & Shield