Boardside Chat to Review Orange Book/Biologics

The USPTO is hosting a Boardside Chat webinar on Thursday, July 18, from noon to 1 p.m. ET, to discuss its previous PTAB Orange Book patent/biologic patent study and district court pharma litigation study. Acting Vice Chief Judge Michelle Ankenbrand and Judge Jason Repko will discuss these studies.

The webinar is free and open to all. There will be a Q&A session at the end of the presentation, questions may be sent in advance or during the webinar to PTABBoardsideChat@uspto.gov.

Access the webinar (here).

Housekeeping Changes & Controlling “Pile On” Petitions

Tomorrow’s Federal Register will notice a second update to the America Invents Acts (AIA) Trial Practice Guide (here).  As practitioners know, this Guide provides additional guidance to practitioners concerning trial practice before the Patent Trial and Appeal Board (PTAB). (The first update came in August of 2018 (here))

The 2019 update mostly revises sections of the Guide that have been outdated since the initial 2012 printing.  For example, the Guide is revised to address:

As noted above, there is a new procedure to combat “pile on” petitions, but aside, from that the changes are simple updates in view of past developments.

2015, 2017, 2018, 2019…

The Stronger Patents Act just wont go away. While the bill has been introduced several times over the years, it has never gotten any significant traction. Since its initial introduction, several of the bill’s Patent Trial & Appeal Board (PTAB) provisions have been mooted by regulatory changes. What remains would effectively repeal the AIA to the point that the PTAB would no longer be a viable option — a non-starter for everyone but Bio/Pharma and small inventors.

So, what is different now? Continue Reading Stronger Patents Act – Back Again

Non-precedential Decision Faults Long-Standing PTAB Practice

Securing additional IPR discovery at the Patent Trial & Appeal Board is a challenge. This is because, such discovery is not accorded as a matter of right, but in the interests of justice. And, frequently, such requests are speculative attempts to add unnecessary complexity to an otherwise streamlined proceeding.

Often times, the Board simply denies requests to authorize a motion on additional discovery via teleconference. That is, the call to receive authorization to file the motion also functions as a hearing of sorts on the merits of the requested motion.

Earlier this week, the Federal Circuit faulted the Board’s practice of denying motion practice in this manner, holding that parties have a right to file motions. Continue Reading Discovery Motion Practice to Become More Commonplace at PTAB

New Precedent Clarifies Previous Uncertainty

Discussing testimony with a witness during a PTAB deposition is a “no-no”….kinda. The Trial Practice Guide (Appendix D) makes clear that counsel may not confer with its witness while under cross-examination. Panels have issued conflicting decisions on whether that prohibition extends to redirect testimony occurring after cross-examination is complete.

In a precedential designation today of a 2014 case, Focal Therapeutics, Inc. v. SenoRx, Inc., Case IPR2014-00116 (PTAB July 21, 2014) (Paper 19), the Board settled that question. Continue Reading Conferring With Your Witness Prior to PTAB Redirect?

Dodocase May Encourage New NDA Strategies

As discussed a few weeks back, licensors have begun to seek cover from the PTAB via forum selection clauses in their licensing agreements. In a recent district court opinion, this strategy was explored as language of a non-disclosure agreement (NDA) between parties pre-litigation.

Left unchecked, the holding in Dodocase could have a chilling effect on pre-suit negotiations as well. Continue Reading Licensors Attempt to Leverage NDAs to Avert PTAB Review

New Informative Decisions

The Patent Trial & Appeal Board (PTAB) issued new informative decisions this week applying its 101 Guidelines.

Ex Parte Olson, Appeal 2017-006489 (PTAB Mar. 25, 2019) (here)

The claims at issue recite a method of registering a catheter navigation system to a three-dimensional image. This decision reverses the rejection by the examiner under 35 U.S.C. § 101. The Board concluded that the claims recite a judicial exception, a mathematical concept, but that the claims recite additional elements that integrate the judicial exception into a practical application.

Ex Parte Kimizuka, Appeal 2018-001081 (PTAB May 15, 2019) (here)

The claims at issue recite a method for fitting a golf club. This decision affirms the rejection of the claims under 35 U.S.C. § 101. The Board concluded that the claims recite a judicial exception, a mental process, and determined that the claims do not integrate the exception into a practical application or provide an inventive concept.

Ex Parte Savescu, Appeal 2018-003174 (PTAB Apr. 1, 2019) (here)

The claims at issue recite a method for creating a life cycle workflow for a project. This decision affirms the rejection of the claims under 35 U.S.C. § 101. The Board concluded that the claims recite a judicial exception, a method of organizing human activity, and determined that the claims do not integrate the exception into a practical application or provide an inventive concept.

Ex Parte Fautz, Appeal 2019-000106 (PTAB May 15, 2019) (here)

The claims at issue recite a magnetic resonance tomography apparatus. This decision reverses the rejection by the examiner under 35 U.S.C. § 101. The Board concluded that the claims recite a judicial exception, a mathematical concept, but that the claims recite additional elements that integrate the judicial exception into a practical application.

These decisions are designated “informative” or exemplary of the Board’s analysis as it is applied under the new 101 Guidelines. While helpful in the short term, let’s hope we can all stop with 101 metaphysics very soon.

Statutory Petition Requirement Correctable

Back in April I discussed the Patent Trial & Appeal Board’s (PTAB) evolving position that an updated RPI designation did not require a resetting of the petition filing date. That is, despite telling Congress that the RPI was a statutory requirement for a petition to be considered in 2015, and that correction of RPI required a new filing date, the Board migrated to a new view that such mistakes could be excused if made without deceptive intent (more recently relying on a footnote in Wifi-One explaining the Board’s practice of accepting corrections to defective filings.)

Last week, the Federal Circuit issued a precedential opinion finding that the PTAB’s interpretation of its remedial regulations in this regard were not plainly erroneous or inconsistent. Continue Reading CAFC Endorses PTAB Practice of Accepting Late RPI Designations

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