Previous PTAB Opinions Designated Precedential

Yesterday, the Patent Trial & Appeal Board (PTAB) designated two older AIA trial decisions, and one recent decision, precedential. These three decisions follow last week’s Precedential Opinion Panel (POP) decision in Proppant Express Investments v. Oren Technologies, which held issue joinder was embraced by 35 U.S.C. § 315(c), but a matter of Board discretion.

Since the revision of its Standard Operating Procedure (SOP) for designating precedential and informative decisions (SOP2), it is expected that the Board will continue to expand upon the current number of precedential decisions. Continue Reading PTAB Ramps Up Issuance of AIA Trial Precedent

PLI Program to Focus on New Patent Owner Opportunities

The USPTO’s Patent Trial and Appeal Board (PTAB) is in the midst of a historic makeover. New leadership has recently introduced significant changes. These changes are designed to rebalance AIA trial practices to allow patent owners a fighting chance. From new claim construction standards, amendment options, revised 101 guidelines, expanded equitable assessments under 314(a), the game has changed.

Please join me today at 3PM (EST) for the Practising Law Institute’s: Getting Your Patent Out of the PTAB: New Opportunities. This program will explore new best practices and address how to leverage the evolving PTAB landscape, including new petitioner risks, patent owner opportunities and changes to come.

I am pleased to once again team with Rob Sterne of Sterne Kessler Goldstein and Fox on this PLI program. Register (here)

PTAB Amendment Pilot Effective Today

Today, the Patent Trial & Appeal Board (PTAB) published the final Pilot Program for Motions to Amend in the Federal Register (here). The Pilot will run for one year, and is applicable to all AIA trial proceedings instituted going forward. (i.e., proceedings instituted before 3/15 are ineligible). The published Pilot carries forward the main idea of the initial RFC — feedback to the Patent Owner on its Motion to Amend prior to final decision — but, offers notable revisions in procedural timing and options as compared to the RFC.

As revised, those Patent Owners inclined to amend before the PTAB, may find the Pilot to offer strategic advantages beyond mere feedback. Continue Reading Gaming the PTAB Amendment Pilot?

Issue Joinder Debate Comes Full Circle

As previously discussed, the Patent Trial & Appeal Board’s (PTAB) new Precedential Opinion Panel (POP) has considered its first case in Proppant Express Investments v. Oren Technologies, Case IPR2018-00914 (PTAB Mar. 13, 2019) (Paper 38)

The POP reversed the earlier (divided) panel decision in Proppant Express (which conflicted with the earlier consensus of Target Corp. v. Destination Maternity), holding that 35 U.S.C. § 315(c) permits issue joinder. More specifically, the POP held that 315(c) provides discretion to allow a petitioner to be joined to a proceeding in which it is already a party and provides discretion to allow joinder of new issues into an existing proceeding (here).

That is, we are right back where we started in Target. Continue Reading New PTAB Precedent: Issue Joinder is Discretionary

Judge Scott Boalick Formally Appointed Chief

The United States Patent and Trademark Office (USPTO) announced today the appointment of Scott Boalick as Chief Judge for the Patent Trial and Appeal Board (PTAB). Boalick has served as the acting Chief Judge for the PTAB since September 2018. Boalick begins his permanent role today.

Boalick was appointed to the Board in 2007. Prior to becoming the acting chief judge, he served as an administrative patent judge, lead judge, vice chief judge, and deputy chief judge.

Also today, the USPTO announced that Jacqueline Bonilla has been appointed as the Deputy Chief Judge of the PTAB, having served as the acting deputy chief judge of the PTAB since September 2018. Bonilla will also begin her position today.

Plenty of March CLE Programs to Choose From

There are quite a few Patent Trial & Appeal Board (PTAB) related CLE events over the next few weeks.

First, today, the PatentsPostGrant March Webinar will cover Patent Derivation, Trade Secret Misappropriation & Inventorship Disputes @2PM (EST).  This program will cover the full breadth of considerations facing research heavy technologies (e.g., Bio/Pharma, semiconductor, etc) under the America Invents Act (AIA).

Register (here

Later this week, the 2019 PTAB Bar Association Annual Conference will come town on March 14 – 152019, at the Ritz-Carlton in Washington, D.C. Pre-conference sessions will be offered March 13th. I’m honored to once again moderate the PTAB Master Class.  

You can view the full agenda and session descriptions (here).

For those not able to get to DC, next Monday, 3/18 @3PM the Practising Law Institute will host a webinar entitled: Getting Your Patent Out of the PTAB: New Opportunities. This program will explore new best practices and address how to leverage the evolving PTAB landscape, including new petitioner risks, patent owner opportunities and changes to come.

I am pleased to once again join with Rob Sterne of Sterne Kessler Goldstein and Fox on this PLI program. Register (here)

Finally, closing out the month of March, on Wednesday, March 27th, the American University Washington College of Law, Federal Circuit Bar Association, & Unified Patents Inc. present the Ninth Annual Patent Administrative Law Conference. The program will cover a host of hot topics including a panel on PTAB changes, and wireless standards and patent pools.

Register (here)

I hope you are available to join one of these upcoming events.

PTAB Updates Amendment Precedent

Today, the Patent Trial & Appeal Board (PTAB) designated Lectrosonics, Inc. v. Zaxcom, Inc, (IPR2018-01129, 01130, Paper 15 (Feb. 25, 2019) precedential as to the agency’s interpretation of 35 U.S.C § 316(d), amendment requirements and burden.

The Order provides guidance and information regarding statutory and regulatory requirements for a motion to amend in light of Federal Circuit case law. Specifically, the order sets forth guidance, such as: (1) contingent motions to amend; (2) the burden of persuasion that the Office applies when considering the patentability of substitute claims; (3) the requirement that a patent owner propose a reasonable number of substitute claims; (4) the requirement that the amendment respond to a ground of unpatentability involved in the trial; (5) the scope of the proposed substitute claims; (6) the requirement that a patent owner provide a claim listing with its motion to amend; (7) the default page limits that apply to motion to amend briefing; and (8) the duty of candor. This decision replaces Western Digital Corp. v. SPEX Techs., Inc., (IPR2018-00082, -00084) (PTAB April 25, 2018) (Paper 13).

The only significant change in Lectrosonics as compared to Spex is language clarifying the right of petitioner to submit evidence during the amendment briefing cycle:

A petitioner may submit additional testimony and evidence with an opposition to the motion to amend, and a patent owner may do likewise with a reply. Generally, a reply or sur-reply may only respond to arguments raised in the preceding brief.  A petitioner’s sur-reply may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness.  A petitioner’s sur-reply should only respond to arguments made in a reply, comment on reply declaration testimony, or point to cross examination testimony.

(internal citations omitted)

The Office is currently working on finalizing its earlier proposed amendment pilot program, this appears to be laying the final groundwork for that roll out.

Unified Patents’ PTAB Database & Analytics

While Patent Trial & Appeal Board (PTAB) documents may be accessed by the USPTO’s PTABE2E portal, this portal offers minimal search options and no analytics whatsoever.  When looking for more than just a straightforward document retrieval (i.e., most of the time), I use Unified Patents free PTAB portal (here).

The Unified Portal offers a host of helpful analytics on both PTAB and district court litigation filing trends, dispositions, particular judges, technologies, as well as law firms.  For researching PTAB issues, it is an indispensable tool, and best of all, it’s free.

Close Trial Date to Doom Parallel IPR Petitions?

Last September, the Patent Trial & Appeal Board (PTAB) found the advanced stage of a parallel district court proceeding weighed in favor of denying a follow-on, IPR petition. NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc. That is, when weighing the equities of a follow-on petition under General Plastic, the competing litigation’s scheduled conclusion before the end of any potentially instituted IPR favored a discretionary denial of the petition under 35 U.S.C. § 314(a).

Since that time, the existence of late stage litigation proceedings has been raised in the context of first-filed petitions, and is beginning to gain traction there as well. Continue Reading PTAB Equitable Analysis Extends Beyond Follow-on Petitions

Burden on Patent Owner to Show Product Manual Available

Does the use of a printed manual at the PTAB foreclose later use of the underlying product in litigation? We know from cases like In Star EnviroTech, Inc. v. Redline Detection, LLC et. al., 8-12-cv-01861 (CACD January 29, 2015, Order) that where a product is superior to a publication in terms of relevant detail, it is considered outside of the reach of 315(e) estoppel.

But what about where the product is the same as a manual that could have been used in the IPR? Continue Reading Avoiding PTAB Estoppel with Physical Product Combinations