Simultaneous/Redundant Petitions Attacking Same Claims Questioned

The Patent Trial & Appeal Board’s (PTAB) new focus on institution equities of serial petition challenges was the most significant development of 2018. Since that time the Board has expanded its equitable focus beyond follow-on petitions and similarly situated defendants to consider parallel litigation timing.

This week, the Board tackled a new consideration. That is, whether it makes sense from a fairness perspective to give an IPR petitioner 5 bites at the same apple. I have been expecting this one. Continue Reading PTAB Pushes Back on Redundant Filings of Same Petitioner

Thursday Webinar Addresses Parallel Post-Grant Proceedings

This Thursday, April 25th, from noon to 1 p.m. ET, the Patent Trial and Appeal Board (PTAB) and the Central Reexamination Unit (CRU) will host a Boardside Chat webinar presenting information on the interplay of AIA trial proceedings under the America Invents Act (AIA), reissue applications, and reexamination proceedings. Deputy Chief Judge Jacqueline Bonilla, CRU Director John Cottingham, and Judge Jason Repko will present.

The webinar will address the notice recently published in the Federal Register on the interplay between AIA trials, reissue and reexamination. Additionally, the webinar will discuss a parallel proceedings study being conducted by the USPTO that explores the interactions and overlap between AIA proceedings, reexaminations, and reissues involving issued patents. (access the webinar here)

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.

PatentsPostGrant.com April Webinar

There is no consensus amongst the courts and commentators as to how SEPs should be valued. This has led to an increasingly complex legal thicket as patented standards become more prevalent across once disparate products and technologies. The difficulties with valuation of SEPs, determining FRAND rates, and complying with FRAND obligations, creates business uncertainty for implementers and frustrates licensing efforts. Navigating the SEP landscape is further complicated by the lack of transparency in SEP royalty rates and licensing practices. How do companies manage these risks and navigate through these patent thickets?

Please join me for an interactive webinar discussion on the SEP licensing landscape next Tuesday, April 30th@2PM (EST). Register (here).

My co-presenters for this webinar will be Steve Pepe, a partner in Ropes & Gray’s IP litigation practice, and special guest Kevin Jakel, Founder and CEO of Unified Patents.

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 above. 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).

Federal Register Notice Advertises Alternative PTAB Amendment Options

Last Friday the USPTO published a notice in the Federal Register entitled: Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding (here). The Notice outlines considerations for stakeholders pursuing reexam/reissue as an alternative amendment path to Patent Trial & Appeal Board (PTAB) AIA trial mechanisms. While, the Notice is careful to emphasize that each case will be considered on its own merits, and provides aspects of the record that will be considered in this regard, practically speaking, most such proceedings will be stayed pending an AIA trial.

The true point of the Notice is to advertise that there are other, ex parte options for amending patents that are separate and apart from the PTAB’s controversial amendment processes. Continue Reading PTAB Amendment Alternatives: Patent Reissue & Reexamination

CAFC Upholds Injunction to Shut Down PTAB

The AIA statutes provide that a person who is not the owner of a patent, can challenge the patent at the Patent Trial & Appeal Board (PTAB). Pursuant to the bright lines drawn by the statute, the PTAB has accepted AIA challenges from non-owners where traditional defenses may have prevented such challenges in other fora. For example, while assignor estoppel might preclude a patent validity challenge in a district court, the PTAB accepts such challenges. In affirming this practice, the Federal Circuit explained that common-law doctrines are subject to abrogation of the AIA statutes.

A more recent argument has been that private agreement, such as a forum selection clause, can divest the PTAB of jurisdiction of a patent validity dispute. For its part, the PTAB has disagreed to date…..the District court on the other hand, has attempted to enjoin petitioners from continuing that the PTAB in such circumstances. Today, the Federal Circuit has backed the injunction strategy, effectively shutting down the PTAB. Continue Reading Shutting Down the PTAB with Forum Selection Clauses

AIPLA Webinar to Explore Convergence of Claim Construction Practices

Today, AIPLA presents Patent Infringement & The PTAB: The Emergence of a Bifurcated System? (here) The webinar will be conducted 1230 – 2PM (EST). CLE credit is available.

AIA Trial Proceedings were designed by Congress to provide an alternative route to challenging patent validity. Now, with the alignment of the courts and Patent Trial & Appeal Board (PTAB) on critical matters of claim construction, and with the Board’s expedited schedule outpacing all but the most aggressive of district court dockets, the PTAB is providing a new alternative — a potential path away from Markman determinations. Given the additional potential for simplification of district court issues, the PTAB is positioned to become the first phase of a new bifurcated system of sorts. That is, the first-in-time claim construction may begin to drive the critical issue of claim construction in patent litigation.

Given these new dynamics, the webinar will explore the overlap of issues and the resulting change to the patent litigation landscape:

  • The potential for increased stays give the Phillips switch and post-SAS Institute
  • The applicability of collateral estoppel across for a on matters of claim construction
  • Impact of PTAB claim constructions on parallel Markman determinations, and the use of Markman Orders at the PTAB
  • Strategies for approaching PTAB petition practice under Phillips
  • Patent Owner strategies for managing the alignment of standards across fora
  • Use of PTAB fact-finding in summary determinations

Hope to speak to you then.

Senate/House Outline Follows USPTO’s Top-Down Approach

The USPTO released Revised Guidance on Patent Eligibility Under 35 U.S.C. § 101 back in January. The Guidelines simplified the case law by presenting a top-down approach to distill the morass of case law on abstract ideas into a list of exempted categories.

Under its new Guidleines, if a patented claim was not directed to an exempt category, the the claims passed muster. If the claim is directed to an enumerated category, a practical application analysis is then performed, and if satisfied, the claims still pass 101 scrutiny. The result is a more patent friendly, and manageable analysis….at least at the USPTO.

Since introduction of the Guidelines, however, the Courts have declined to show them deference. Yet, Congress appears poised to enact legislation to forcibly align the Courts with the agency 101 Guidelines. Continue Reading Congress Poised to Align Courts with USPTO on 101 Reform

Precedent Indicates Mistaken RPI Correctable Without Date Reset

A few weeks back I pointed out that the Patent Trial & Appeal Board (PTAB) had changed its position on whether or not a new RPI designation requires a resetting of the petition filing date. It has now made that determination precedential, along with two other decisions on the topic. Continue Reading PTAB Determines that RPI Designation is Not a Statutory Requirement After All

Timing of Estoppel Unimportant

Last week in Novartis Pharmaceutical Corp. v. Par Pharmaceutical Inc., Nos. 14-1289-RGA, 14-1494-RGA, 15-0078-RGA (D. Del. Apr. 11, 2019), (here) the court addressed a motion to estop defendants from asserting invalidity arguments based on prior art references already presented at trial. The motion argued that, in related IPR proceedings brought while litigation was pending, the same defendants challenged and failed to prove the unpatentability of overlapping claims. The Board’s Final Written Decision (FWD) issued during the appeal. (later remanded back to D.Del)

Novartis argued that, irrespective of the timing of the FWD, that the invalidity defenses and counterclaims presented at trial by defendants should be estopped. Continue Reading PTAB Estoppel Thwarts Post-Trial Invalidity Consideration

Director Encouraged to Do What He is Already Doing?

At several bar events over the past few weeks, the Director has made clear that the agency is “looking into” ways to address certain serial petitioning practices beyond that of the “follow-on” scenario. For example, where multiple petitions are filed at the same time for the sole purpose of multiplying the number of grounds for an AIA trial proceeding.

This past Tuesday, the Senate Judiciary Committee sent a letter to Director Iancu seemingly asking him to do what he is already doing.  And for him to respond to proposed directives (transparently presented in the form of questions) on accomplishing such. Continue Reading Senate Provides Directives to USPTO to Attack Serial PTAB Filings