Motion to Amend Practice

For those interested in motion to amend practice in AIA trials, the Patent Trial & Appeal Board (PTAB) will be conducting a webinar on the topic this Wednesday, December 4th from noon to 1PM (EST) (here)

Deputy Chief Judge Jackie Bonilla and Lead Judge Jessica Kaiser will address a recent notice of proposed rulemaking on the burden of persuasion in motion to amend practice; the status of the motion to amend pilot program; and use of reexam proceedings and reissue applications as an alternative way to secure amended claims.

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

Overview for Those New to AIA Trials

The Patent Trial & Appeal Board (PTAB) will conduct a Boardside Chat today from noon to 1PM (EST) for those wanting to learn AIA Trial basics.  Lead Judge James Worth and Judge Alyssa Finamore will walk through the AIA trial process and explain each step in detail. Access (here)

The webinar is free and open to the public. There will be a Q&A session with the judges at the end of the presentation, questions may be sent in advance or during the webinar to

Unanimous Support for Legislative Fix

Today, the House Judiciary Committee conducted a hearing entitled “The Patent Trial and Appeal Board and the Appointments Clause: Implications of Recent Court Decisions.” The hearing explored whether or not the current Federal Circuit solution was effective in curing the Appointments Clause defect, while there was some debate over whether the “fix” would hold, all of today’s witnesses were unanimous in that Congress, could, and should, fix the issue in the short term. Continue Reading House Judiciary Told Legislative Fix to Arthrex Defect is Necessary

Government Intervenes to Thwart Arthrex Remands

As expected, the government has informed the Federal Circuit of its intention to seek en banc rehearing in Arthrex Inc. v. Smith & Nephew, Inc.  Having intervened in a number of cases seeking remand post-Arthrex the government has now moved to stay these proceedings pending its en banc petition. Continue Reading Government Indicates En Banc Petition Forthcoming for Arthrex

Orders Stave Off Further Remands….For Now

During last week’s argument in Polaris, appellant argued that the Court’s fix to the PTAB’s Appointments Clause problem was insufficient. According to appellant, “reviewability” is the touchstone of recent Appointments Clause precedent, and that as the proposed fix did not address the lack of reviewability over APJ decisions (because the Federal Circuit could not), it was up to Congress to fix.  During that same hearing, the Court contemplated additional briefing on this topic, which it recently solicited from the parties.

In the meantime, learning from its mistake in its recent Uniloc remand, the Federal Circuit is now allowing time for the government to intervene in parties seeking remand after Arthrex (here) and (here). Continue Reading Lawmakers Consider Fix as CAFC Deals With PTAB Appointments Clause Fallout

Reasonably Could Have Raised & Reasonably Diligent

Prior to last year’s SAS decision, district courts split over whether non-petitioned grounds were embraced by the “reasonably could have raised” aspect of 35 U.S.C. §§ 315(e)(2) and 325(e)(2) estoppel.  However, a growing number of district courts post-SAS have construed this phrase to define grounds that a party could have included in its petition, but did not.  In doing so, the courts are also making clear that the burden of proving that a ground could have reasonably have been raised, lies with the Patent Owner. Continue Reading Courts Apply More Flexible Analysis to PTAB Estoppel

Appointments Clause Argument Forfeited if Not Raised in Opening Brief

With the ink barely dry on Thursday’s Federal Circuit ruling that the Administrative Patent Judges (APJs) of the Patent Trial & Appeal Board (PTAB) were unconstitutionally appointed, Appellant Notices of Supplemental Authority began to roll into the Court Friday morning.  For Appellants that had appropriately raised the issue in their opening brief to the Court, some were remanded to the PTAB (Uniloc 2017 LLC. v. Facebook Inc.).  Other such appeals were allowed to proceed to oral argument based, in part, on DOJ involvement. (such as today’s argument in Polaris Innovations Limited v Kingston Technology Co. Inc.)

For Appellants hoping to take advantage of the Appointments Clause development who had not briefed it, the Court found such arguments forfeited. Continue Reading CAFC Quickly Shuts Down Belated Appointments Clause Arguments

Well, that Escalated Quickly…

On the heels of the supplemental briefing discussed yesterday, the Federal Circuit has already issued its decision in  Arthrex Inc. v. Smith & Nephew, Inc.  The Court has vacated and remanded the decision, ordering  a new hearing before a panel of different APJs, prospectively remedying the issue by severing the problematic aspect of 35 U.S.C. § 3(c).

So, what does this mean for pending appeals? Continue Reading CAFC: PTAB Judges Operating in Violation of Appointments Clause

Supplemental Briefing Focuses on Remedies

As discussed last week, the Federal Circuit has requested supplemental briefing in Arthrex Inc. v. Smith & Nephew to assess how best to remedy a potential Appointments Clause violation.  The supplemental briefing has now been submitted.  While the Court deliberates whether it is appropriate to remand or vacate the Arthrex matter, the government’s brief and Appellee brief look to the potential impact in other PTAB appeals. Continue Reading CAFC Warned Hundreds of PTAB Appeals Potentially Subject to Appointments Clause Fallout

November Webinar to Focus on Appellate Hot Topics

The November edition of the webinar series will be held Monday, November 4th@ 2-3PM (EST). The November program will focus on emerging appellate issues expected to drive PTAB practice in the months ahead.

The webinar is entitled: PTAB Reset 2020: Appointments Clause Turmoil & Appellate Docket Recalibration.  Most notably, the webinar will explore the current Appointments Clause dilemma and its potential impact on current PTAB appeals, active PTAB litigants, and previously cancelled patent claims.  Other topics to be explored include the potential restriction of the PTAB appeal bar in Dex Media Inc. v. Click-to-Call Technologies, LP., application of 101 to PTAB amendments, and Article III standing challenges.

My co-presenters for this webinar will be Ropes & Gray’s Appellate & Supreme Court Practice Chair Doug Hallward-Driemeier and IP Litigation Partner Matthew Rizzolo.

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 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)