Carve-Out
Federal Circuit to Reconsider In re Cellect Carve Out?

Back in August, the Federal Circuit issued its long-awaited decision in Allergan v. MSN Laboratories Private Ltd. That decision distinguished In re Cellect as not generally deciding that a second later expiring patent can always serve as a proper OTDP reference. And more particularly that a first-filed, first issued, later-expiring claim cannot be invalidated by a later filed, later issued, earlier expiring claim (yes, its a mouthful).

Yesterday, that decision was petitioned for en banc review.

Continue Reading Allergan OTDP Exception – Rehearing?
images_content_PTAB-1
Final Rules Expand Director Review Reach

The USPTO has now issued a final rule package (here) to implement the Director Review process in AIA trial proceedings. The final rules follows the Notice of Proposed Rulemaking (NPRM) of April 16th and responsive public comments.

Based on the comments, the final rule proposal has been revised to expand Director Review to derivation proceedings, and will include other decisions in AIA proceedings outside of just institution decisions and Final Written Decisions (FWD) such as decisions to terminate.

The final rule provides that a party to an AIA proceeding may request Director Review of:

  1. Decision on institution
  2. Final decision (defined as a final written decision in an inter partes or post grant review proceeding or a final decision in a derivation proceeding)
  3. Decision granting rehearing of a decision on institution or a final decision
  4. Other decision concluding an AIA proceeding

The final rule further provides that the Director may initiate a review of such decisions sua sponte; sets forth the timing and format of a party’s request for Director Review; addresses the impact of Director Review on the underlying PTAB proceeding; clarifies the time by which an appeal to the U.S. Court of Appeals for the Federal Circuit must be filed; and provides that the Director may delegate a review.

exception
CAFC Distinguishes Cellect Based on First-in-Time Patent Term

Today the Federal Circuit issued its long-awaited decision in Allergan v. MSN Laboratories Private Ltd. As expected by many following the case, the Court decided that being “first” matters in double patenting scenarios—at least when the subject and reference patent claim a common priority. (here)

Allergan answers one question, but others remain.

Continue Reading Allergan “First” Exception To Cellect OTDP Scenarios
roadsigns
FWD Boilerplate Encourages Rework

Rule 42.73 (d)(3)(i) explains that a Patent Applicant or a Patent Owner is precluded from taking action inconsistent with a claim cancellation, including, obtaining in any patent a claim that is not patentably distinct from a finally refused or cancelled claim (IPR/PGR/reexam). Last week the Federal Circuit clarified the scope of this rarely applied PTAB rule in SoftView v. Apple.

In practice, the agency has very rarely applied Rule 42.73. Examiners don’t appear to be aware of the rule when prosecuting continuation filings or reexamination/reissues. To my knowledge there has been no examiner training and there are no MPEP insert paragraphs. And PTAB judges prefer to re-apply the art used to cancel the earlier claims over a less familiar estoppel analysis.

Far more troubling, however, is the PTAB practice of suggesting to Patent Owners that they may obtain new/amended claims after claim cancellation in an IPR/PGR through patent reexamination or reissue.

Continue Reading CAFC Backs Patent Owner Estoppel – PTAB Should Stop Suggesting Otherwise
images_content_2014_PTAB-1-e1504150612256
Boardside Chat Thursday July 18th

Tomorrow, Thursday, July 18, from noon to PM (EST), the USPTO will offer another episode of its “Boardside Chat” webinar series. This month, the webinar will focus on motions practice in America Invents Act (AIA) proceedings before the PTAB. The presentation will include a discussion of various motions that are available to parties during an AIA proceeding, the procedural requirements for filing each motion, and some common mistakes made during motions practice. PTAB judges will also share practical tips and discuss strategies that may be effective in seeking motions before the board.
The panel features:
• Administrative Patent Judge Brian McNamara
• Administrative Patent Judge Grace Obermann
A Q&A session will follow the presentation. Questions may be sent in advance or during the webinar to PTABBoardsideChat@USPTO.gov. Register (here)

PTAB-legislation
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
Wolf
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)

images_content_2014_PTAB-1-e1504150612256
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
images_content_2014_PTAB-1-e1504150612256
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 PTABBoardsideChat@USPTO.gov.

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