New IP(DC) Podcast

June 19th marked the 5th anniversary of the Supreme Court’s impactful decision in Alice Corp. v. CLS Bank, which some argue shifted the landscape in an anti-patent direction. As discussed here at length, a bipartisan group of Congressional members are working this summer to revise Section 101 and 112 of the Patent Act.

My partner, Matt Rizzolo and I discuss the scope of the proposed legislation, its prospects for passage, and the actions that patent owners and potential defendants may want to take to minimize the uncertainty that comes with potential legislative action. Matt and I  also discuss the recently proposed Term Act, which seeks to limit patent term for some Bio/Pharma patents as well as notable decisions of the Federal Circuit and SCOTUS.

You can access the podcast (here)

Ropes & Gray’s podcast series, IP(DC), focuses on developments in intellectual property law from the vantage point of Ropes & Gray’s office on Pennsylvania Avenue in Washington, D.C.

Appeal Bar Dispute Heads to SCOTUS

The SCOTUS has shown an affinity for disputes of the Patent Trial & Appeal Board (PTAB). Today, the Court took up its 5th PTAB dispute in three years granting cert in Dex Media Inc. v. Click-To-Call Technologies, LP.

The underlying dispute in Dex relates to the one-year window of 35 U.S.C. § 315(b). As is well-known, this window precludes AIA trial petitions from a party more than one year after service of a complaint of infringement. Prior to the Federal Circuit’s reversal in Dex (more familiar to practitioners as “Click-to-Call”), the Board had consistently held that where a first-filed complaint (outside the window) was dismissed without prejudice, that the original window trigger becomes a nullity. The Federal Circuit disagreed, holding that the voluntary dismissal of a civil action does not nullify an administrative time bar that is triggered by service of that complaint.

In granting cert, the Court will consider only the the threshold issue of whether 315(b) disputes are even reviewable by the Federal Circuit in view of the appeal bar of 35 U.S.C. § 314(d). That is, the Court will have an opportunity to expand upon the “shenanigans” discussed in Cuozzo Speed Techs. v. Lee that are outside of the 314(d) appeal bar. Continue Reading SCOTUS Review of PTAB Appeal Bar Unlikely to Change 315(b) Time Bar Realities

Term Act Seeks to Add New Bio/Pharma Litigation Hurdle

It was easy to miss last week’s introduction of a new patent reform bill on the House side entitled: “Terminating the Extension of Rights Misappropriated Act of 2019” with so much focus on the Senate’s patent subject matter eligibility hearings.  The “Term Act of 2019” is described as addressing “the rising cost of prescription drugs by significantly limiting the process known as “evergreening,” whereby pharmaceutical companies make minor changes to a drug and file for a new patent on those trivial changes in order to extend their exclusivity and maintain high prices.”

Under the heading “Prevention of Double Patenting” the bill seeks to add a special presumption for Orange Book patents directed to a same drug/biological product. Continue Reading Bio/Pharma to Face Second Double Patenting Hurdle?

Recapture, Orita Doctrine & Same Invention Limit Scope

As provided by 35 U.S.C. § 251, Patent Reissue is a mechanism by which a Patent Owner may correct an error in an issued patent. A proper reissue application is directed to an error that renders an issued patent wholly, or partly, inoperative. Such an error could be the mere absence of narrower dependent claims. In re Tanaka (CAFC 2011)

Although patent reissue allows for the correction of mistakes in claim scope, the proceeding is not a “do-over” of the original prosecution — not even when broadening. For example, claim scope previously surrendered may not be “recaptured” via a broadening patent reissue. This same public reliance policy reasoning is utilized in other obscure aspects of patent reissue practice. For example, the Orita doctrine, prevents Patent Owners from obtaining by reissue, restricted claims that were never pursued.

This week, the Federal Circuit revisited a further limit on broadening patent reissues it last addressed in 2014. Continue Reading Broadening Reissue Patents Have Limits

Legislation & Continued Judicial Feedback

There have been a number of developments in the courts, at the USPTO, and on the legislative side over the past few months. These developments, some of which have been discussed here at length — such as the 101 legislative effort — will continue to drive new patent strategies and concerns in the months ahead.  Some quick thoughts, predictions, and some odds and ends as we head into the slower summer months.

  • On the 101, side, the proposed legislative framework will be refined over the next few weeks in response to feedback collected from the marathon hearings of a week ago. Senator Coons has promised a revised draft after the July 4th recess. You can expect to see that revision sometime in the month of July (before the Summer Recess (August)).  Revisions will likely include some degree of definition for “technology” as presently defined in the bill, timing provisions on when the 101 and 112 changes would take effect once enacted (i.e., prospective or not), and perhaps a codification of obviousness-type double patenting. I do expect that a 101 bill will be enacted by year-end (barring impeachment, or other time consuming, legislative adventures)
  • On the Supreme Court side, Article III standing to the CAFC was denied cert in RPX Corp. v. ChanBond, and we saw a decision in Return Mail Inc. v. United States Postal Service (here) I have largely ignored Return Mail here. Aside from the academic interest of whether the government can be a “person,” this case has little practical effect on PTAB practice. With 1-2 government filings per year, on average, it is just not that interesting for practitioners. That said, vendors of the government lodging such filings concurrent with a Court of Claims dispute should expect a privity argument headed their way.
  • Speaking of privity, there have been a number of recent PTAB decisions addressing such relationships. Be careful…it’s going to get much hairier for joint defendants and customer/supplier relationships.
  • Collateral estoppel from adverse PTAB rulings is becoming a problem for patent owners trying to manage multiple, inconsistent appeals. Papst Licensing GmbH v. Samsung Elec. America, Inc.(here)  Or, patent owners trying to return to court on claims that re indistinguishable to cancelled claims.  Intellectual Ventures I, LLC v. Lenovo Group Ltd., 
  • The Federal Circuit denied state sovereign immunity from PTAB proceedings, not surprisingly, following its earlier decision on tribal Immunity. Regents of the Univ. of Minn. v. LSI Corp. et al. (here)
  • At the Patent Trial & Appeal Board (PTAB) a few POP decisions are expected very soon on important matters of printed publications, and 315(b). Additional precedent is also expected on the agency’s new 101 and 112 guidelines.  Finally, last week saw the first use of the PTAB’s new Amendment Pilot.

As usual, a busy few months ahead.

Interactions During Preliminary Proceeding Can Doom PTAB Filing

Since last summer’s decisions in Applications in Internet Time, LLC v. RPX Corp., and Worlds Inc. v. Bungie, Inc., the Patent Trial & Appeal Board (PTAB) has seen RPI/privity disputes spring back to the fore. The renewed scrutiny presents challenges for petitioners participating in joint defense groups or those obligated under indemnification agreements.

A precedential decision issued today by the Federal Circuit highlights the danger of new RPI and privy interactions post-petition filing.  Continue Reading Post-filing Conduct Impacts PTAB RPI/Privity Determinations

PatentsPostGrant.com June Webinar

June 19 marks the 5th anniversary of the Supreme Court’s impactful decision in Alice Corp. v. CLS Bank, which dramatically changed the analysis of patentable subject matter in both patent prosecution and patent litigation.

Currently, a bipartisan group of Congressional members introduced what could be the first revisions to Section 101 of the Patent Act in nearly 70 years. Over the last few days, Congress has held multiple hearings on the issue, with dozens of witnesses testifying on the impact this proposed legislation could have on industries ranging from tech to biopharma.

In the June webinar we will discuss the USPTO’s revised 101 guidelines, the scope of the proposed legislation, its chances for passage, and the actions that patent owners and potential defendants may want to take to minimize the uncertainty that comes with potential legislative action

Please join me for an interactive webinar discussion on the 101 reform initiatives next Monday June 17th@2PM (EST). Register (here).

My co-presenter for this webinar will be Matt Rizzolo, a partner in Ropes & Gray’s IP Litigation Practice.

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 free webinar please sign up via the link above. You will receive a registration confirmation email immediately. One hour 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).

Plan Ahead for 101 Change

With the Senate conducting marathon hearings on the subject of patentable subject matter this week (i.e., 35 U.S.C. § 101), and with significant effort to date to move legislation forward, it appears that 101 change is coming — and soon.

Given the imminent legislative reset, what should you do if your patent is invalidated by the Court’s under the current 101 regime? Continue Reading Preparing for 101 Change: Preserving Future Arguments

Senate Judiciary Hearings Start Next Week

The Senate Judiciary Committee will conduct back-to-back hearings next Tuesday and Wednesday entitled “The State of Patent Eligibility in America. The marathon fact-finding hearings come on the heels of the proposed 101 framework released last week. Each of the hearings will include three panels of five speakers.

Judging on the lineups for next week, so far the deck is plainly stacked pro-reform. Continue Reading Senate 101 Hearings Stacked in Favor of Reform

Proposed Framework Isn’t Just About Fixing 101

Since Wednesday’s release of a proposed 101 framework, some have mistakenly dismissed its legislative viability as failing to account for the interests of Big Tech — nothing could be further from the truth.

The proposal is the result of months of negotiations with the major patent stakeholders, most notably the Bio/Pharma and Tech lobbies. While the Bio/Pharma side would greatly benefit from a broadening of patent eligibility (such as proposed) to more readily secure patent protection for technologies such as medical diagnostics, the Tech Lobby has largely opposed such as it leverages 101 to fight back against abstract patent claims. To bridge this divide, the framework presents a narrowing provision that will primarily impact the claim scope of patents asserted against Tech. Continue Reading 101 Legislative Proposal Includes Provision to Narrow Functional Claims