Court Explores Potential Outcomes in Arthrex

As I have discussed previously, Arthrex is more of an academic exercise for constitutional and administrative law nerds scholars than anything else.  Today’s oral argument has done nothing to disabuse me of that notion.  While it is a fool’s errand to speculate at a SCOTUS outcome based on oral arguments, I am the perfect man for the job 🙂

Continue Reading USPTO Director May Soon Get Last Word at PTAB

Inconsistency Across Related Cases is Precluded

When challenging related patents at the Patent Trial & Appeal Board (PTAB), it is not uncommon to present similar grounds of unpatentability across related filings— for example, where the claim sets are substantially similar.  In such scenarios, it is expected that the PTAB will arrive at consistent determinations across the filings. Of course, there is no guarantee, that the same judge will decide all of the cases.  In such instances, there is a possibility of inconsistent results, especially where the challenges are advanced at different times.

For example, party A might challenge a parent patent in an IPR, and lose on a question of obvious under 103.  When a continuation patent issues a bit later, Party A may attempt to challenge the continuation on the same grounds (perhaps bolstered by a better presentation or additional evidence).  In such a scenario, is the Board free to change its mind?  Or is the Board collaterally estopped given the earlier determination, and the same party pursuing the same argument?

Continue Reading Collateral Estoppel in AIA Trial Proceedings

February Webinar to Provide Insights from the PTAB Bench

Since waiting out the pandemic doesn’t appear to be working, time to get back in the webinar saddle! The February edition of the PatentsPostGrant.com webinar series will be held Wednesday, February 24th@1-2PM(EST). The February program will focus on insights and practice tips from the PTAB Bench, and, as such, is appropriately entitled: Insights from the PTAB Bench. 

The interactive program will explore PTAB trial practices from the perspective of an Administrative Patent Judge (APJ). Namely, former Administrative Patent Judge (APJ) and recent addition to the Ropes & Gray PTAB team, Philip Hoffmann, who will explain his experience and viewpoints on PTAB trial practices. The topics explored will span petition and POPR insights through trial and oral advocacy tactics.  Please join Ropes & Gray’s PTAB Chair Scott McKeown & IP Litigation partner Matt Rizzolo for an interactive webinar discussion of these critical PTAB trial insights.

The formal portion of the webinar will begin at 1PM 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 below. 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).

Free Registration: (here)

Texas Courts See Influx of Cases Against Retailers & Banks

Prior to the sun setting on the Covered Business Method (CBM) patent challenges this past September, the filings of such challenges with the PTAB had tailed off significantly. This led many to believe that the proceeding had outlived its usefulness.  However, a recent uptick in business method assertions (as I predicted would occur) seems to demonstrate that the mere existence of the CBM proceeding had a prophylactic impact on the assertion of business method patents. Continue Reading Business Method Patent Assertions Increase Without PTAB CBM Option

PTAB Team Expands to Include PTAB Judge in the Mechanical Arts

Just a quick shout out to welcome Phil Hoffman to the R&G PTAB team. Phil joins us from the PTAB after spending most of the last decade as an Administrative Patent Judge (APJ).  Phil presided over PTAB trials and ex parte appeals in the mechanical arts.  Prior to the PTAB, Phil was in private practice, including a stint as in-house counsel at General Electric. Phil has an extensive background in the mechanical arts, and a BS in mechanical engineering from Rensselaer Polytechnic Institute, and a law degree from the great GW Law.  Welcome Phil!

Legislative Fix Enacted for Trademarks

On March 1st, the Supreme Court will hear its fifth PTAB related case in United States v. Arthrex Inc.  At issue in this latest dispute is whether, for purposes of the Constitution’s appointments clause, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the president with the Senate’s advice and consent, or “inferior Officers” whose appointment Congress has permissibly vested in a department head. While this may sound like a boring legal debate for administrative law nerds (and it kinda is), there are some real world consequences for us super cool PTAB practitioners.

But, as made clear by a recent change to the Trademark statutes in the Trademark Monetization Act (TMA), it all may end in a fizzle for PTAB practitioners. Continue Reading Legislative Cure Provided for Potential Arthrex Deficiency

First Boardside Chat of the Year

This Thursday the Patent Trial & Appeal Board (PTAB) will offer its first Boardside Chat of 2021, from noon to 1 p.m. (EST).

Several administrative patent judges of the PTAB will cover:

  • Final rules related to institution of trials, including elimination of the presumption at institution that a genuine issue of material fact is viewed in the light most favorable to the petitioner;
  • Final rules concerning the burdens of persuasion in motions to amend;
  • New precedential decisions related to the application of the Fintiv factors and the need to conduct a real-party-in-interest analysis at institution; and
  • The indefiniteness standard to be applied by the Board in AIA trials.

Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Mike Tierney, and Lead Judge Kal Deshpande will present.

The webinar is free and open to all (access here). There will be a Q&A session at the end. Questions may be sent in advance (or during the webinar) to PTABBoardsideChat@uspto.gov.

Agency Left to Defend Unsettled Legacy

Upon taking the reins at the USPTO, Director Iancu made clear that he believed the Patent Trial & Appeal Board (PTAB) was cancelling too many patent claims in AIA trial proceedings.  Of course the PTAB was simply implementing the statutory framework given to it by Congress – and the Federal Circuit was largely affirming the PTAB’s work. So, the only possible “fix” for the Director was to rebalance the rules/practice to his liking (i.e., in favor of patent owners).

And he changed as much as he could, as fast as he could. Continue Reading Activist Director Moves On – What’s Next for the PTAB?

Litigators Amending Claims?

Patent prosecution bars are prophylactic provisions typically included in district court protective orders when there is a risk that a recipient of confidential technical information may use (inadvertently or otherwise) that information while prosecuting patent applications in related technology.  Prosecution bars eliminate this risk by preventing individuals who have access to technical information from directly or indirectly drafting, amending, advising, or otherwise affecting the scope of patent claims in a technical field related to the patents at issue.

Many prosecution bars are now written to cover PTAB proceedings, such as IPRs (since amendment is possible). However, whether district court litigators will be permitted to participate in PTAB proceedings may depend on the particular district where the subject patent is being litigated. Continue Reading Prosecution Bars & The PTAB – An Evolving District Court View

New PTAB Roadblocks & Strategies

Earlier this week I laid out my Top 5 PTAB cases of 2020 for PTAB Practitioners, focusing on those cases that changed day-to-day practices before the agency. Like the practitioner list, my Top 5 PTAB developments of 2020 for District Court Litigators will focus on those practical PTAB developments that will impact parallel litigation practices outside of the agency.

In 2020, there were a number developments of interest to litigators, from litigation forums where a PTAB challenge is foreclosed or highly unlikely, to stipulations for avoiding PTAB discretionary denials, and new risks of collateral estoppel across a litigated portfolio. Continue Reading Top 5 PTAB Developments of 2020 for District Court Litigators