In-Person Hearing are Back

This Thursday (Noon – 1PM(EST)), the next Patent Trial and Appeal Board (PTAB) Boardside Chat webinar will be conducted to discuss plans to re-establish in-person PTAB hearings and tips from judges for successfully arguing in different environments (connect here)

Topics and speakers for this event include:

  • In-person options for PTAB hearings starting in mid-July – Lead Administrative Patent Judge Christopher Kaiser and PTAB Chief Clerk Erica Swift
  • Tips for successful hearings in remote and in-person environments – Administrative Patent Judges Grace Obermann, Scott Daniels, and Garth Baer

A question-and-answer session will follow the presentation. Please send questions in advance or during the webinar to PTABBoardsideChat@USPTO.gov

PTAB Reform Act of 2022

Back in September of 2021, the “Restoring the America Invents Act” was released by Senators Leahy (D-VT) and Cornyn (R-TX). The bill sought to reverse virtually every PTAB development of the Iancu administration. At the time, I outlined my thoughts on the various provisions, and predicted the most controversial—from a bio/pharma perspective— would serve as cannon fodder.

Last week, a revised bill reemerged entitled the “PTAB Reform Act of 2022.” The new bill, includes most of the content of the earlier bill with only issues of particular interest to bio/pharma left on the cutting room floor.

Continue Reading Proposed PTAB Reforms Adjusted for Bio/Pharma

Memo Responds to CAFC Refinement

At the close of former USPTO Director Iancu’s tenure, he issued a memo explaining that Applicant Admitted Prior Art (AAPA) should not be used as a basis of an AIA trial ground.

Today, new Director Vidal issued a revised memo to “provide more certainty and predictability in proceedings before the Patent Trial and Appeal Board (PTAB). This guidance supersedes the guidance previously issued by former Director Iancu.

Specifically, the updated guidance clarifies that AAPA does not improperly form the “basis” of an IPR under § 311 when the IPR petition relies on AAPA in combination with one or more patents or printed publications, and is consistent with the recent decision of the Court of Appeals for the Federal Circuit in Qualcomm Inc. v. Apple Inc., 24 F.4th 1367 (Fed. Cir. 2022). That is, as long as the AAPA is not an explicitly named component of a trial ground, it may still be used as an evidentiary basis underlying the ground.

You can find the full memo (here)

About Face Responsive to Mandamus Filing

I’ve pointed out a few times now that the IPR filings of OpenSky are inevitably doomed. There is just too much evidence of bad faith for there to be any other outcome. And as I also pointed, out the POP request has been pending since January, presumably awaiting the new Director to settle the issue. Today the POP Request was finally denied, strangely, in favor of a Director Review.

I know what you are thinking. “Wait a minute, there is Director Review of institution decisions? Since when!?”

Since a mandamus petition sent the agency scrambling to fix this constitutional infirmity.

Continue Reading Director Review Now Possible For PTAB Institution Decisions?

CAFC OKs Interim Director Actions

The first Arthrex battle at the SCOTUS was an attempt to pull down the PTAB system based upon a violation of the Appointments Clause. That effort failed, and instead, the Court simply allowed for a principal officer, the Director, to review Final Written Decisions (FWDs). Then, when Director Iancu stepped down, the interim Director took over the Director Review functions. Arthrex II argued that this was substitution was improper as the interim Director was not a political appointee (i.e., Senate confirmed).

Neither of these disputes were of much interest to to me. In my view the first challenge was always going to end in some kind of remedy that would have little impact on PTAB practice, and the second, at best, was just going to end up with a new signature on the same Director Review decision.

So, it was not surprising when Arthrex II fizzled out last week.

Continue Reading Arthrex II Fizzles

New Internal Committee Structure to Appease Critics

Last week the PTAB announced a change to its internal handling of decisions. That is, while previously PTAB management reviewed certain decisions to ensure consistent treatment of relatively uncommon issues, that duty is now being passed to rank-and-file PTAB judges.

Why would anyone care about this (other than me), and why the change? Because the PTAB was plainly out-to-get innocent patent owners, that’s why!!

Continue Reading PTAB Adjusts Internal Review Process

Trial Dates & Backward Looking Stats Unreliable?

This past November, Senator Tillis has cautioned the agency that “it is difficult to imagine any plausible justification for the continued reliance on the demonstrably inaccurate trial dates set by the Waco Division.” Fintiv practices have remained unchanged since that time.

More recently, the WDTX had occasion to consider the competing schedule of another forum. Finding that the WDTX was faster, it looked to the realities of the other forum’s scheduling.

Continue Reading WDTX Looks at Average Time to Trial, Why Doesn’t the PTAB?

New Director to Review Hirshfeld Decisions?

Patent Owners that had the option to avail themselves of the new Director Review process under former interim Director Hirshfeld have been crying foul to the Federal Circuit. Their argument being that the Arthrex holding required a Senate confirmed Director Review, and that an interim Director (promoted from within) did not meet that criteria. Argument was heard a month or so back at the Federal Circuit on this issue.

Since that time, Senate confirmed Director Vidal has finally taken the wheel. Realizing this, the gov’t now hopes to pull the plug on these appeals.

Continue Reading More PTAB Arthrex Remands?

314(a) Practices Evolve

Discretionary denials of AIA trial petitions under 314(a) have fallen significantly over the past few months. But, Fintiv practices are not quite dead yet. As noted by IPWatchdog last week, although less frequent, occasional denials still occur.

Certainly the WDTX is no longer the silver bullet to the PTAB. That is, recent congressional inquiry asserting that its trail dates are suspect, has highlighted that the agency should expect to reach a decision before the Court. Yet, the agency should not expect petitioners to make that point in their filings.

Continue Reading PTAB Fintiv Practices Need Reality Check