Federal Gov’t & Federal Contractors in the Court of Federal Claims – A Legal Relationship?

Federal government contractors are protected from patent infringement suits when infringing activities are performed pursuant to a contract with the Federal Government. 28 U.S.C. § 1498(a).  Under § 1498, rather than sue such contractors directly in a Federal District Court, patentees must instead file a suit against the United States in the Court of Federal Claims.  Typically, contractors will intervene thereafter and become third party defendants.

When these contractors lodge IPR petitions with the PTAB, they often take the view that since they were never served with a “complaint for infringement,” that the one year anniversary of the 1498 complaint does not preclude such filings under 35 U.S.C. § 315(b).  But a recent case will explore the legal relationship of the Federal Government to its contractors, and whether at least a privity relationship exists for purposes of applying 315(b) to the complaint anniversary date. Continue Reading PTAB Considers RPI/Privy Relationship of Federal Gov’t in Related Court of Federal Claims Dispute

Informative Decisions Address Design Choice Considerations

Today, the Patent Trial & Appeal Board (PTAB) designated two ex parte appeal decision informative, Ex parte Spangler, Appeal No. 2018-003800 (Feb. 20, 2019) & Ex parte Maeda, Appeal No. 2010-009814 (Oct. 23, 2012)

The Spangler decision (here) affirmed an examiner’s obviousness rejection determining that claimed relative lengths and locations of two claimed components were a matter of obvious design choice. The Board explained that since the specification did not suggest that the relative lengths or locations were critical to the claimed invention, variations of such was a matter of design choice.

Showing the other side of the coin, Maeda (here) reversed the examiner’s obviousness rejection, which determined that the location of a claimed component of a manufacturing apparatus was a matter of obvious design choice because moving the component to the claimed location would result in a different function than shown in the prior art.

While helpful for patent prosecutors dealing with such rejections before the Examining Corps, the loose application  of “design choice” arguments is also a common petitioner misstep in AIA Trial Proceedings.

October Boardside Chat Looks Back at FY2019

Today, from noon to 1 p.m. (EST), the Board will conduct its October Boardside Chat.  The October discussion will cover 2019 changes to ex parte appeal and AIA trial procedures.

The FY2019 changes include the Motion to Amend pilot program, latest updates to the AIA Trial Practice Guide, establishment of a revised process to issue Board precedent, and release of several new informative and precedential decisions. Chief Judge Scott Boalick, Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Tim Fink, and Lead Judge Kal Deshpande will present during this webinar.

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)

Indemnification “Significant and Meaningful Relationship”

Extending a trend started last spring, the PTAB is looking more closely at AIA trial petitions coming from separate parties.  For parties seeking to pursue an AIA trial proceeding, this trend should give pause to those considering participation in Joint Defense Groups, or linked to another petitioner by business arrangement or indemnification obligation.

Last week, in PayPal Inc. v. Ioengine LLC, the Board explained that a customer/supplier relationship, together with indemnification obligation is enough to be considered a “same petitioner” in a General Plastic analysis. Continue Reading PTAB Focuses on Customer/Supplier Relationship in 314(a) Denial

Director Determinations Cannot be Made by an AIA Trial Panel

Motion practice in AIA trial proceedings is typically limited to the handful of motions that may be filed as  a matter of right. (Pro hac, Joinder, Exclude, Amendment).  Prior authorization must be received from the assigned APJ panel to file any other motion.  Such authorization is usually pursued via a party teleconference with the Board.  To date, these teleconferences have been conducted as a motion hearing of sorts where the panel considers the merits of the requested relief before granting authorization to file.  In denying authorization to file, the Board essentially decides the merits of the requested motion.  Recently a non-precedential decision of the  Federal Circuit has frowned upon this practice, finding that Motions for Additional Discovery may be filed as a matter of right.

In a case yesterday, the Court again knocked the practice of deciding issues that have not been fully developed via motion practice. Continue Reading CAFC Again Faults PTAB for Denial of Motion Practice

October Boardside Chat to Cover FY2019 PTAB Changes

With today being the last day of FY2019, the October Boardside Chat will look back at all of the 2019 changes to ex parte appeal and AIA trial procedures. The webinar is scheduled for October 10th, from noon to 1 p.m. (EST).

The FY2019 changes include the Motion to Amend pilot program, latest updates to the AIA Trial Practice Guide, establishment of a revised process to issue Board precedent, and release of several new informative and precedential decisions. Chief Judge Scott Boalick, Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Tim Fink, and Lead Judge Kal Deshpande will present during this webinar.

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)

Agency Discretion May Permit Joinder of New Party Claims

Issue joinder practice at the Patent Trial & Appeal Board (PTAB) has had a storied history to date.  As a reminder, the debate at the agency (spawning the now infamous “panel stacking” decisions) has been the proper scope of “joinder” under 35 U.S.C. § 315(c).  That is, “can an existing petitioner (party) properly “join” its own proceeding to add a new issue to that proceeding, or is this statute limited to more traditional notions of party joinder?”

From the agency’s perspective, this issue was finally settled by the Precedentiial Opinion Panel (POP) decision in Proppant Express Investments v. Oren Technologies, Case IPR2018-00914 (PTAB Mar. 13, 2019) (Paper 38)  In this decision, the POP held that 35 U.S.C. § 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).

Since Proppant, the Federal Circuit  has had an opportunity to consider PTAB issue joinder practices  in Facebook, Inc. v. Windy City Innovations, LLC. , and judging by the oral argument, is not in favor of endorsing this practice.  But, the USPTO has indicated in a brief (amicus brief) submitted post Facebook oral argument, that regardless of the outcome in Facebook that issue joinder practice may live on.  Continue Reading PTAB Issue Joinder Could Live On Despite CAFC Outcome

Unrebutted Secondary Indicia Considered in Assessing Becton-Dickinson Factors

The submission of so-called “objective indicia of non-obviousness” at the PTAB is rarely effective, especially in the predictable arts (i.e., mechanical/electrical).  This is because the most common form of such evidence, “commercial success” is often difficult to tie to any particular claim feature (unlike drug formulations, for example).  That said, as a Graham Factor that is assessed in an obviousness determination, the failure to address previously established indicia could prove fatal to your petition.  Continue Reading PTAB Denies Petition Overlooking Objective Indicia of Non-Obviousness

September Webinar to Focus on RPI/Privy Issues

The September edition of the PatentsPostGrant.com webinar series will be held this Wednesday September 18th@ 2-3PM (EST). The September program is entitled Avoiding PTAB Pitfalls: Indemnification & Joint/Common Interest Agreements.

The webinar will explore the increasing complexities of real party in interest (RPI) and privity determinations before the USPTO Patent Trial & Appeal Board (PTAB). In particular, the webinar will focus on multi-defendant disputes, and the risks/considerations in joining joint defense groups (JDG)/Common Defense Agreements, and in navigating indemnity agreements and obligations. The discussion will explore the Board’s renewed interest in these issues based upon recent guidance of the Federal Circuit.

My co-presenter for this webinar will be Matthew Rizzolo, litigation counsel in Ropes & Gray’s intellectual property litigation practice.

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)

Lack of Stakeholder Consensus on 101 Effort

The sponsors of the promised bill to reform 35 U.S.C. § 101 are struggling to regain earlier momentum. It seems that the inclusion of the 112(f) provision (designed to bring Big Tech to the table on an otherwise unwelcome reform effort) has not been effective. Worse, the 112 provision has actually turned off some in Bio/Pharma. As such, the 101 bill promised back in July now appears to be slipping to October.

Given the recent complications, the Stronger Patents Act has been dusted off to remind Big Tech that, at least in theory, there could be much worse legislative consequences than a more patent friendly 101 statute.  Continue Reading Political Theater & The Stronger Patents Act