Final Rule Package Expected in Fall

For those patent professionals living under a rock the past few months, the USPTO issued a notice of proposed rulemaking (NPRM) back in May that seeks to add a new stipulation requirement for terminal disclaimers filed to overcome non-statutory double patenting (here). Under the proposal, to overcome an obviousness-type double patenting rejection, the Applicant would need to stipulate that the entire patent subject to the terminal disclaimer will be enforceable only to the extent that the conflicting claims of the reference patent remain valid and enforceable. In other words, if conflicting claims of a reference patent fail, so too would all claims of the subject patent, including any patentably distinct claims.

The NPRM comment period closed yesterday and hundreds of public comments have been collected (here). Now what?

Continue Reading Public Comment Period on Controversial Terminal Disclaimer Proposal Now Closed
Litigation/PTAB Update & Look Forward to 2025

For those seeking CLE, or just the latest updates and practice changes, consider joining me and my colleague Libbie DiMarco for the upcoming Mid-Year Litigation & PTAB Review. The webinar will be offered twice on Wednesday, June 26th. First for U.S. attendees (12-1PM EST), and again for Asian based attendees (9-10PM EST). CLE is offered for NY only.

The program will cover:

  • 2024/2025 patent litigation trends: ITC domestic industry, double patenting, forum shopping, legislative proposals, and more.
  • Will the 2025 PTAB look like the 2024 PTAB? Rule proposals – what makes it? Political turnover and new policies? Legislation?
  • Pulling it all together to manage parallel proceedings in 2025 and beyond.

Register for either time (here)

Public Notice & Transparency

Yesterday the PTAB announced an update to its Standard Operating Procedure (SOP 1). The update explains how judges are paneled, recused, and staffed on a given case. This latest revision aligns with recently updated Paneling Guidance, Standard Operating Procedure 4, and Director Review procedures. In other words, this SOP is just memorializing how the Board has been internally managed. (Such transparency has become increasingly important over the years given the cottage industry of PTAB conspiracy theorists, which is certainly not lost on the agency)

The SOP update (here), explains in relevant part:

  • The SOP does not include a procedure for panel expansion, a process that was discontinued in 2018
  • Clarification of conflict of interest procedures for judges
  • Explanation of judge jurisdiction (ex parte only, etc.)
  • Explanation of judge paneling by technology and cluster (design, reexamination, reissue, ex parte technology cluster)
  • Explanation of judge paneling cases related to previous PTAB decisions
  • Explanation of judge paneling of related AIA filings
  • Explanation of recusal procedures
Rule Package Discussion

This Thursday May 16th, from noon to 1 p.m. ET, the USPTO will conduct its latest “Boardside Chat.” This week’s program will provide an overview of two recently published notices of proposed rulemaking impacting the the PTAB.

Register (here)

As always, a question-and-answer session will follow the presentation. Questions may be sent in advance or during the webinar to

Proposal to Thwart Rerun Patent Assertions

An inventor may obtain claims in a second U.S. patent that vary in only minor (patentably indistinct) ways from claims the same inventor obtained in a first patent. But the USPTO will typically reject the claims in the second application under the doctrine of “obviousness-type double patenting.” Inventors can overcome such rejections during prosecution to obtain the second patent (and many more thereafter if desired) by filing a terminal disclaimer. The language of the terminal disclaimer prevents the timewise extension of patent term through multiple filings and prevents the indistinct claims from being separately assigned. In this way, terminal disclaimers are designed to strike a balance between incentivizing innovation while providing more certainty and protection to the public.

Over the years, the terminal disclaimer has worked exactly as designed. However, the usual bad actors have driven the USPTO to propose its first change in decades.

Continue Reading Terminal Disclaimer Proposal Driven By Rerun Lawsuits
Next Director Likely to Swing the Pendulum Back

PTAB 314(a) discretionary practices have followed the so-called “Fintiv factors” for years now. Under former Director Iancu (Republican appointee) Fintiv denials were so commonplace that overall institution rates dropped almost 10%. Current Director Vidal (Democrat appointee) recalibrated PTAB Fintiv practice via memo, and, as a result, Fintiv denials are relatively uncommon today. As Director Vidal’s memo is not committed to regulation, the next Director is free to swing the pendulum back.

It may seem that the likelihood of any such change is dependent on the outcome of the election given the tug-of-war of Trump/Biden appointees. But, it seems increasingly likely that that such a swing is inevitable regardless of election outcome.

Continue Reading Will PTAB Fintiv Practices Be Reinvigorated Under the Next Director?

Missed Opportunity & Further Patent Owner Headaches

The wait is finally over! (no not Taylor Swift’s new album…think nerdier….like way nerdier)

Last Friday the USPTO finally released its Notice of Proposed Rulemaking (NPRM) directed to Patent Trial & Appeal Board Practices (here) a year after its overly-ambitious Advanced NPRM (ANPRM) was released. While readers of this blog already knew what was going to be in the NPRM, the release of the NPRM at least confirms that the agency still intends to move something forward in the waning months of the Vidal administration. Whether the agency will get anything over the finish line in time is far from clear.

The NPRM is most noteworthy for what it does not include — every underdeveloped/legislative idea of the ANPRM. But that was entirely predictable. Perhaps more concerning is the absence of a codification of current Fintiv 314(a) practices. Such discretionary denial practices exploded under the previous Director only to be reined in under Director Vidal via a guidance memo. This ping-pong action will continue across administrations unless and until regulations are issued. The next Director will almost certainly reinvigorate Fintiv practices regardless of election outcome (more on that later this week)

As to the content of the NPRM itself, some marginal value and an oddly misguided option that hurts Patent Owners and risks derailing the entire proposal.

Continue Reading Limited PTAB Rule Proposal Marred by Ill Conceived Briefing Changes
Valve Precedent Reined In by Director Review Order

Last week the Director vacated IPR denials based upon a misapplication of Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 (Apr. 2, 2019) (precedential). As a reminder, Valve, extended the discretionary denial practices set out in General Plastic of so-called “follow-on” petitions of a same party to that of related parties having a “significant relationship.” However, over the years the unique scenario of Valve started to be argued as applicable to more typical scenarios where different parties happened to be litigating the same patent in different, unrelated suits.

Most recently, the Valve drift ensnared an IPR petitioners Honda, GM and Ford based on earlier filings of a co-defendant (Volkswagen). In last week’s Director Review Order the Director made clear that where there are different accused products in different court proceedings there is not a “significant relationship” between filers outside of “relevant or extenuating facts or circumstances.”

Continue Reading PTAB Recalibrates Related Party Analysis
Boardside Chat Thursday

The PTAB will conduct its next Boardside Chat webinar this Thursday, March 21st, from noon to 1 p.m. ET, to discuss hearings before the Board. The presentation will include a virtual tour of the hearing rooms, along with information on some of the updated technical capabilities available, as well as statistics on in-person versus remote hearings over the past year. A panel of PTAB judges will share practical tips and discuss strategies that may be effective in hearings before the Board. The panel features:

  • Acting Deputy Chief Administrative Patent Judge Michael Kim
  • Lead Administrative Patent Judge Stacey White
  • Administrative Patent Judge Michael Astorino
  • Chief Clerk Erica Swift
  • Deputy Chief Clerk Kulunie Cannon

As always, a question-and-answer session will follow the presentation and questions may be sent in advance to

Register (here)

USPTO Issues NPRM to Codify Amendment Pilot Permanent

While awaiting the overdue Notice of Proposed Rulemaking (NPRM) on the hodgepodge of proposals from last year, the agency has issued a few NPRMs over the past week. First was a proposal to streamline the pro hac vice practice (non-event). Late last week a slightly more interesting NPRM was issued to formalize the provisions of the Motion to Amend (MTA) Pilot Program. (here)

As a reminder, the MTA Pilot Program provides a patent owner who files an MTA with options to request preliminary guidance from the PTAB on the MTA and to file a revised MTA based on the feedback. Of course, it is rarely a good idea to amend claims at the PTAB regardless of the mechanisms used. This is why the agency reports less than 10% of proceedings include an MTA. Still, for those few patent owners interested in amending, the pilot program offers some incremental procedural value.

The NPRM, aside from seeking to codify existing practices, additionally outlines the exercise of discretion in the wake of the Hunting Titan case. That is, what role does the agency play in raising unpatentability grounds of its own for amended claims — particularly given the presumption of validity accorded issued claims?

Prior to Hunting Titan, the agency took the view that it should be a “rare circumstance” when the PTAB might raise a new ground of unpatentability on its own. The CAFC found that standard inconsistent with the agency’s public policy in protecting the public from improvidently granted patent monopolies.

The NPRM proposes that the Board will exercise its discretion in raising new grounds where a petitioner stops participating, or decides not to challenge the amended claims. In exercising that discretion, the Board may request prior art search support from the examining corps; a rare scenario. But at least the academic debate on how unexamined claims might be accorded a presumption of validity has been put to rest.