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

Director Memo Decides Against Standard of In Re Packard

Back in 2018 I noted the current PTO administration had backed away from a dispute on the appropriate 112 standard to apply in AIA trials (after intervention by the previous PTO administration). That is, the initial intervention sought to support the application of the standard enunciated by In re Packard to AIA trial proceedings.  After Director Iancu came on board, that Intervenor Brief was withdrawn.

Today, the PTO formally announced (via memorandum) that the Nautilus standard applies to AIA trials – settling an open question….at least for the time being.

Continue Reading PTAB Applies Nautilus 112 Standard to AIA Trials…For Now

2020: POP Precedents & Director Driven Changes

In 2020, the Board continued to expand 314(a) discretion through numerous Precedential Opinion Panel (POP) decisions. These decisions, among a number of other developments, demonstrated a clear interest on the part of the current Director to rebalance AIA trial proceedings in the direction of patent owners.  At the same time, the agency experienced increasing push back from larger innovator organizations — often subject to frivolous patent litigation— to rein in discretionary practices as it relates to favorite NPE venues. Rule packages attempting to codify 314(a) practices in a manner that would conform with the Administrative Procedure Act (APA) were killed, and lawsuits challenging the agency 314(a) practices were filed.  In the background (as seems to occur every year) a constitutional challenge to the PTAB’s very existence made its way to the SCOTUS.

Another exciting PTAB year in the books. But before closing the books on 2020, here are my Top 5 PTAB decisions/developments that changed the game for PTAB practitioners. Continue Reading Top 5 PTAB Decisions of 2020

Another Day, Another 314(a) Discussion

On the heels of its precedent of a week or so back, the PTAB is adding more to the swirling hairball known as the “Fintiv factors.”  First, the Board has clarified that agreeing to IPR estoppel proactively (before institution) and not pursuing such grounds in the parallel infringement proceeding, is a strong factor in favor of institution.

Sotera Wireless, Inc. v. Masimo Corporation, IPR2020-01019, Paper 12 (Dec. 1, 2020) (precedential as to § II.A) (here)

In addressing the Fintiv factors, Sotera explains that the petitioner’s broad stipulation not to pursue in district court any ground that it raised, or could have raised, in the inter partes review weighs strongly in favor of institution.  (I don’t see much downside to such a stipulation as you are far more likely to succeed at the PTAB on such grounds anyway.)

Snap, Inc. v. SRK Technology LLC, IPR2020-00820, Paper 15 (Oct. 21, 2020) (precedential as to § II.A) (here)

Snap explains that a district court stay that would remain in place until an inter partes review final written decision weighs strongly in favor of institution.  (Of course, if the case is stayed I am not sure why the Fintiv factors would even be applied since there is no longer a fixed trial date or any efficiency consideration.)

POP to Decide Further Extension of 314(a)?

A year or so back, I discussed a 314(a) dispute at the Patent Trial & Appeal Board (PTAB) where the Board considered a co-pending ITC investigation. In that decision, the Board instituted trial, pointing out that “the ITC does not have the authority to invalidate a patent and ITC decisions do not necessarily pertain to the issues raised in an inter partes review petition.”  More recently the applicability of ITC investigations to a Fintiv factor 314(a) analysis was raised in Garmin International, Inc. v. Koninklijke Philips N.V., (IPR2020-00754).

In Garmin, the Board found that a co-pending ITC investigation favored a denial of institution. The case is noteworthy as in assessing the Fintiv factors, the Board effectively made clear that any petition concurrent with an ITC filing should be denied.

Now the dispute is up for consideration by the Precedential Opinion Panel (POP). Continue Reading 314(a) To Block All ITC Disputes from PTAB?

Final Rule Package Updates Current PTAB Practices with Two Additions

The USPTO will publish a final rule package today (draft here) that largely presents the earlier Notice of Proposed Rule Making in final form. Most of the changes addressed rules outdated by the SCOTUS decision in SAS Institute, or simply codified existing practices, such as sur-replies.  As such, the bulk of the earlier proposals were not controversial.

However, the earlier Notice also proposed one new idea, eliminating the presumption accorded to petitioner testimonial evidence in the preliminary proceeding (when disputed by patent owner testimonial evidence to the contrary). This proposal was the focus of much of the public commentary.

Despite most bar associations opposing this change, the final rule will in fact eliminate the presumption, starting January 11th (January 9th being a Saturday). The Final Rule also adds a new rule-based prohibition on Sur-reply filings. Continue Reading PTAB to Eliminate Institution Presumption on January 11th

Boardside Chat Focuses on Multiple Petition Outcomes

This coming Thursday, December 10th, from noon to 1 p.m. ET, the Patent Trial & Appeal Board (PTAB) will offer its next Boardside Chat Webinar to discuss several aspects of PTAB trial proceedings.

Lead Judge Bill Saindon will present the results of the PTAB’s recently updated multiple petitions study. Lead Judges Jessica Kaiser and Michelle Ankenbrand will share preliminary results of the Motion to Amend Pilot Program. Lead Judge Ankenbrand will explain the purpose of two forms available for the public to use in seeking designation of PTAB decisions as precedential or informative and in addressing whether the Precedential Opinion Panel grant or not grant review in a particular case.

The webinar is free and open to all (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