Pro-Patent Owner Options

The new Director of the U.S. Patent & Trademark Office (USPTO) has issued a Notice of Proposed Rulemaking (NPRM) in record time. With only a few weeks on the job, the Director issued a NPRM to switch the Broadest Reasonable Interpretation (BRI) currently used in Patent Trial & Appeal Board (PTAB) trial proceedings to a Phillips claim construction. The proposal was quickly lauded by Patent Owners believing that the application of the Phillips standard by the PTAB will lead to narrower claim constructions, and thus, more patents being upheld by the agency. But, as I pointed out previously, in practice, BRI is rarely different from a Phillips construction. In fact, utilizing the same standard at the PTAB as in the courts might only make matters worse for Patent Owners from a monetization perspective.

Impact of the proposed claim construction change aside, the speed at which the Director has acted speaks to his keen interest in improving the PTAB playing field for Patent Owners. With the Director expected to issue further proposals to aid Patent Owners, below are some likely candidates. Continue Reading How Might the Director Improve the PTAB for Patent Owners?

Government Brief Faults Tribal Immunity Logic

On June 4th, the Federal Circuit will hear arguments in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc.  As a reminder this case will explore whether principles of sovereign immunity prevent the Patent Trial & Appeal Board (PTAB) from conducting an Inter Partes Review (IPR) of a patent owned by a Native American tribe.

In advance of the upcoming hearing, the U.S. Dept. of Justice has filed its amicus brief supporting the agency’s decision to deny immunity.  The government brief explains that “[n]o principle of sovereign immunity entitles an Indian tribe to withhold a public franchise from reconsideration by the superior sovereign that granted it.” Continue Reading PTAB’s Sovereign Power Superior to State/Tribes

Full-Day Webinar Offers Comprehensive PTAB Coverage

PLI’s PTAB Trials 2018 will be held this Tuesday, May 15th in San Francisco. If you can’t get there in person, strongly consider the webinar of this full-day event. PLI’s comprehensive program is the longest running and most widely attended PTAB-related CLE in existence. Rather than just exploring PTAB trial practices, this program is known for its 360° degree analysis of the PTAB on the overall patent ecosystem. This year’s program will provide the first, deep-dive analysis of the recent changes introduced by the Supreme Court, as well as proposed and expected USPTO rule packages.

This year’s program also adds unique segments dedicated to licensing and monetization strategies in Silicon Valley, as well as PTAB-centric patent prosecution practices. I am pleased to continue to chair this program alongside Robert Greene Sterne of the Sterne Kessler firm. (The New York stop of this program will be September 21st and will include a similar monetization module directed to Bio/Pharma)

Hope to see you there.

 

Existing BRI Litigation Cover Will Be Blown

While the Patent Trial & Appeal Board’s (PTAB) plan to switch from the broadest reasonable interpretation (BRI) toPhillips claim construction may not be the magic bullet that Patent Owner’s expect, the switch will pose strategic problems for petitioners. Even though the PTAB rarely discerns a difference between a BRI and Phillips constructions, the courts think very differently than the expert agency. For this reason, Petitioners often cited to the different claim construction standards to explain away the application of a broader read at the PTAB as compared to that urged in the court. This enabled petitioners to take positions on claim breadth in PTAB petitions that would otherwise undermine a non-infringement position if advanced under Phillips.

Going forward at the PTAB under Phillips, petitioners will be forced to commit to a one-size-fits-all claim construction. Continue Reading A Phillips Construction Will Complicate PTAB Petition Drafting

Change in PTAB Claim Construction May Make Matters Worse for Patent Owners

As I pointed out back in March, the Patent Trial & Appeal Board’s (PTAB) switch from the Broadest Reasonable Interpretation (BRI) standard to a Phillips claim construction for AIA Trial Proceedings was telegraphed in advance. The rule package, released today (here), is limited to AIA trial proceedings (IPR, PGR, CBM). Left untouched are patent interference, reexamination, reissue, supplemental examination and derivation proceedings. Upon final rule issuance (late summer/fall) AIA trial proceedings will apply a district court or “Phillips” claim construction. Given the current proposal it appears that this change will apply to all pending proceedings.

Patent Owners were quick to applaud the proposed claim construction change as a huge win……it’s not. Continue Reading Patent Owners May Rue the Day They Pushed the PTAB to Phillips

SAS No Help to Patent Owners

Since the Supreme Court’s decision in SAS Institute there has been much speculation over its practical impact on stakeholders. That is, does SAS favor petitioners or patent owners? I’ve participated in a number of CLE panels on this topic and have been shocked by those interpreting SAS as somehow beneficial to Patent Owners.

Make no mistake about it, SAS hurts Patent Owners…bigly. Continue Reading What Happens to PTAB Institution Rates Post-SAS?

Can Dismissal Of A Complaint Without Prejudice Unring the 315(b) Bell?

Because there hasn’t been enough change to the PTAB over the last week with SAS Institute, get ready for more…but this one will aid Patent Owners.

Yesterday the Federal Circuit heard argument (again) in relation to the 2013 IPR filing in Oracle Corp. v. Click-to-Call Techs. LP.  As a reminder the PTAB’s decision in this dispute was designated precedential. (Section (III.A)). The precedential portion explains that the dismissal of a lawsuit “without prejudice” nullifies the service of the complaint relative to 35 U.S.C. § 315(b). This was a critical determination to this petition as it appeared that one of the identified petition filers had been served with a complaint outside of the one-year IPR window. The Federal Circuit was able to reach this timing issue for the first time on appeal after WiFi One.

During yesterday’s oral argument, it appeared that this PTAB precedent will fall. Continue Reading IPR Time Bar Exception to End?

Upcoming PTAB Related CLE

Even before last week’s Supreme Court opinions in Oil States and SAS, the month of May was already jam packed with PTAB-related CLE.

This week, there are a number of shorter, focused webinars, as well as the MIP PTAB forum in New York. Mid-May brings PLI’s flagship PTAB Trials 2018.

First, don’t forget the PTAB itself is holding a “Chat with the Chief” webinar today from noon to 1 pm ET to discuss about the Supreme Court’s decisions on Oil States and SAS. Chief Judge David Ruschke will discuss the decisions, their impacts on AIA trial proceedings, and answer questions. The webinar is free and open to everyone to attend (here)

On Tuesday May 1st, @ 1-2PM EST is a special edition of the PatentsPostGrant.com free webinar series entitled: Supreme Court Debrief: Oil States & SAS Institute: The Aftermath. This webinar will be focused on changing PTAB and litigation strategies in light of Oil States and SAS, including those changes discussed by the chief in today’s Chat with the Chief webinar. On this program I will be joined by Ropes & Gray’s Appellate and Supreme Court practice chair Douglas Hallward-Driemeier, as well as patent litigator Matthew Rizzolo. Register (here)

Wednesday May 2nd @ 1-2PM EST brings the regularly scheduled PatentsPostGrant.com free webinar entitled: Bio/Pharma Deals & Dispute Resolution in the PTAB Era. For this webinar I am joined by Ropes & Gray’s Life Sciences IP Litigation Chair Filko Prugo, and IP Transactions Partner Melissa Rones. Register (here)

On Thursday May 3rd in NYC, is Managing Intellectual Property’s PTAB Forum. This full-day program will move to Palo Alto on May 8th.

Last but not least is PLI’s PTAB Trials 2018 on May 15th in San Francisco (also available by webcast). The PLI program is the longest running and most widely attended PTAB-related CLE in existence. This year brings special segments dedicated to licensing and monetization strategies in Silicon Valley, as well as PTAB-centric prosecution practices. I am pleased to continue to chair this program alongside Robert Greene Sterne of the Sterne Kessler firm. (The New York stop of this program will be September 21st)

Hope you are able to attend one of these many upcoming programs.

Pending Cases to Revisit Pruned Claims/Grounds

Today the Patent Trial & Appeal Board (PTAB) issued guidance on the impact of SAS on AIA trial proceedings. The guidance explains that:

[F]or pending trials in which a panel has
instituted trial only on some of the challenges raised in the petition (as opposed to all challenges raised in the petition), the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition. … ¶ [F]or pending trials . . . the panel may take further action to manage the trial proceeding, including, for example, permitting additional time, briefing, discovery, and/or oral argument, depending on various circumstances and the stage of the proceeding.

You can find the full guidance (here)

Special PatentsPostGrant.Com Webinar Next Tuesday

In addition to the already scheduled webinar next Wednesday on Bio/Pharma Deals & Dispute Resolution in the PTAB Era, a special webinar entitled: Supreme Court Debrief: Oil States & SAS Institute:The Aftermath will be held on Tuesday, May 1, 2018 @ 1-2PM (EST) Register (here)

Yesterday, the Supreme Court issued opinions in both the Oil States and SAS Institute appeals. These opinions will have an immediate impact on proceedings at the Patent Trial and Appeal Board (PTAB), pending PTAB appeals to the Federal Circuit, and patent litigation strategies. The webinar will identify key takeaways from these opinions, and offer insights and discuss possible practice changes that will occur in the weeks/months ahead. Ropes & Gray speakers will be PTAB practice chair Scott McKeown, Appellate and Supreme Court practice chair Douglas Hallward-Driemeier, and patent litigator Matthew Rizzolo.