Federal Circuit Gives Short Shrift to Bias Arguments

A number of due process theories have been floated over the past few months as the “next big thing” in potential constitutional challenges to the PTAB.  Some have been arguing that PTAB judges are financially incentivized to institute  Others have pointed out that judges that institute AIA trials are biased in favor of cancelling claims given it is the very same judges on the back-end.

Yesterday, the Federal Circuit shot down both theories. Continue Reading Due Process Argument Against PTAB Funding Structure Fails

Abusive Reexam Relief

Late last month, in In re Vivint, Inc., the Federal Circuit tackled the question of whether a post-issuance review proceeding (in this case, ex parte reexamination (“EPR”)) was available to a challenger that repeatedly filed another post-issuance review proceeding (in this case, inter partes review (“IPR”)) to forward the very same argument. The court held that, while the EPR request had shown substantial new questions of patentability, “the Patent Office abused its discretion and acted arbitrarily and capriciously under § 325(d).” As such the court vacated the decision and remanded to the Patent Office (“PTO”) with instructions to dismiss.

But, don’t expect this decision to be much more than a corner case. Continue Reading Reexam After Failed IPR?

Do Private Arbitration Agreements Undermine Public Policy?

With Congress considering “encouraging” stays of patent litigation pending concurrent PTAB review, licensors may begin to look to contractual  mechanisms to avoid a PTAB filing altogether.  The strategy is not unprecedented, and may provide a way for district courts to enjoin the agency from moving forward with AIA trials.

But, should private agreements thwart mechanisms designed to remove improvidently granted patent monopolies? Continue Reading Avoiding the PTAB by Private Agreement?

October Webinar to Debrief on Leahy Bill

Senator Patrick Leahy (D) VT and Senator John Cornyn (R) TX have jointly drafted a new bill entitled the “Restoring the America Invents Act.” The Bill proposes to roll-back recent directives and policies of former USPTO Director Iancu, most notably discretionary denials of AIA trial proceedings in view of parallel litigation.  Given the explosion of patent litigation in the Western District of Texas, and the opinion of some in Congress that lax patent policy is leading to extended drug monopolies that artificially inflate drug pricing, the foundation is being laid for a legislative adjustment to U.S. patent law that will resonate with voters.

The draft bill includes proposals to:

    • Limit PTAB discretion to deny institution of post-grant proceedings
    • Expand the jurisdiction of the PTAB
    • Encourage courts to stay litigations proceeding in parallel to a PTAB trial

In this free webinar, I will review the various components of the bill along with my partner Matt Rizzolo, discuss its prospects for passage, and the implications it may have on patent litigation and monetization practices.

The formal portion of the webinar will begin at 2PM (EST) 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)

Same Questions, Different Rubric?

Senator Patrick Leahy has now proposed draft legislation to add Obviousness-Type Double Patenting (OTDP) to IPR jurisdiction. The argument for adding this potential ground is that it is an important control to combat improperly extended drug monopolies (the justification underlying much of the legislative proposal).  Whether this provision makes it to law is far from clear given the likely push back from Bio/Pharma.

In the meantime, a Pharma dispute recently argued that OTDP is basically the same PTAB obviousness analysis under a different rubric.  An awkward argument given the coming storm. Continue Reading PTAB Estoppel & Double Patenting?

Bill Released – Iancu Era Rebuked

Well, the wait was not that long after all.  Senator Leahy -VT (D) (with co-sponsor Senator Cornyn – Tx (R)) has today released the draft bill entitled “Restoring the America Invents Act.”  The bill includes most of what I expected, with a handful of additional tweaks.

Below is a brief overview of all of the proposed changes. Continue Reading Restoring the America Invents Act – What You Need to Know

CAFC Cautions Against IPR Stay Considerations in Venue Dispute

A mandamus is considered an extraordinary remedy — especially in the venue context where district courts are accorded broad discretion.  Nevertheless, where a motion to transfer presents an indisputable right, mandamus is proper. Recently, the Federal Circuit has been uncharacteristically outspoken that the WDTX is doing it wrong.

The most recent WDTX mandamus on this issue, while unsuccessful, found the Federal Circuit once again pointing out improper analysis. Continue Reading Judge Albright Faulted for Considering IPR Stay Likelihood in NDCA

Board Considers Propriety of Deposition Exhibits in Sur-Reply

As a reminder, a Patent Owner Sur-Reply may only be accompanied by the last deposition transcript – no other exhibits. 37 C.F.R. § 42.23(b)  Recently, the Board has considered the propriety of additional sur-reply exhibits that were introduced at deposition. That is, if not policed, the last deposition might present an opportunity to “back-door” additional exhibits to circumvent the rule.

The Board’s view of this practice may depend upon the exhibit. Continue Reading Deposition Exhibits in Your PTAB Sur-Reply?

Leahy Bill Seeks to Outlaw PTAB Fintiv Practice

As I predicted just this past Monday, Chair of the IP Sub-committee, today Senator Patrick Leahy proposed some noteworthy changes to PTAB practice. While a draft bill is yet to be released, as reported by IPLaw360, several high level goals of the forthcoming bill have been outlined. Continue Reading Senate Bill Proposes to Reset PTAB Practices

PTAB Master Class Tomorrow!

Tomorrow, the PTAB Bar Association will kick-off its annual conference. The conference will bring together practitioners, in-house counsel, and members of the bench for a dynamic discussion of Patent Trial Appeal Board (PTAB) best practices, recent developments and trends, policy considerations, and more.  This year, we are in-person only!

The 3-day conference will cover agency developments, administrative law practices, and a host of PTAB specific strategies, and best practices. The program includes a Boot Camp segment for new practitioners, and a Master Class for more experienced practitioners. Other highlights include panel of administrative patent judges of the PTAB, as well as a segment on CAFC practices, including Judge Newman, Judge O’Malley and Judge Chen. (full agenda here)

I am pleased to be moderating the Master Class session on Wednesday, September 22nd. The Master Class is an innovative workshop program exploring complex and strategic decisions in AIA trial proceedings where there may be many “right” answers . . . depending on the facts. Veteran lawyers will discuss how they approach difficult situations to give their clients an edge, and PTAB judges will offer their insights and perspectives.

I hope to see you there!