October 2019

Well, that Escalated Quickly…

On the heels of the supplemental briefing discussed yesterday, the Federal Circuit has already issued its decision in  Arthrex Inc. v. Smith & Nephew, Inc.  The Court has vacated and remanded the decision, ordering  a new hearing before a panel of different APJs, prospectively remedying the issue by severing the problematic aspect of 35 U.S.C. § 3(c).

So, what does this mean for pending appeals?
Continue Reading CAFC: PTAB Judges Operating in Violation of Appointments Clause

Supplemental Briefing Focuses on Remedies

As discussed last week, the Federal Circuit has requested supplemental briefing in Arthrex Inc. v. Smith & Nephew to assess how best to remedy a potential Appointments Clause violation.  The supplemental briefing has now been submitted.  While the Court deliberates whether it is appropriate to remand or vacate the Arthrex matter, the government’s brief and Appellee brief look to the potential impact in other PTAB appeals.
Continue Reading CAFC Warned Hundreds of PTAB Appeals Potentially Subject to Appointments Clause Fallout

November Webinar to Focus on Appellate Hot Topics

The November edition of the PatentsPostGrant.com webinar series will be held Monday, November 4th@ 2-3PM (EST). The November program will focus on emerging appellate issues expected to drive PTAB practice in the months ahead.

The webinar is entitled: PTAB Reset 2020: Appointments Clause Turmoil & Appellate Docket…

Aqua Products Hoists PTAB Critics by Their Own Petard
An Avalanche of FWD Do-Overs Imminent?

Back in June I explained the latest constitutional challenge to AIA Trial Proceedings under the Appointments Clause of the U.S. Constitution.  In a nutshell, the argument is that PTAB Administrative Patent Judges (APJ) are “superior officers” delivering the final word of the government in PTAB trial proceedings.  And that, as such, APJ actions are unconstitutional since they are not political appointees confirmed by the U.S. Senate — as the Appointments Clause requires.

That argument found its way to the Federal Circuit earlier this month in Arthrex Inc. v. Smith & Nephew, Inc.  At oral argument, the Court probed the Director’s ability to remove APJs, and seemed concerned that this deficiency was enough to violate the Appointments Clause.  An Order issued last week for additional briefing appears to reinforce the expectation that the Court will find the APJs functioning in violation of the Appointments Clause.Continue Reading Patent Owner Trick or Treat? – Appointments Clause Debate to Jolt PTAB

Burden of Persuasion to Demonstrate Unpatentability on Petitioner

The United States Patent and Trademark Office (USPTO) has issued a Notice of Proposed Rulemaking (NPRM) to allocate the burdens of persuasion on motions to amend in AIA trial proceedings before the Patent Trial and Appeal Board (PTAB).  The NPRM proposes that a petitioner bears the burden to show the unpatentability of substitute claims proposed in a motion to amend; a patent owner bears the burden to show that a motion to amend complies with certain statutory and regulatory requirements; and the Board may, in the interests of justice, make a determination regarding the patentability of substitute claims based on the record in the proceeding regardless of the burdens assigned to any party.

The NPRM basically follows the en banc decision in Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), in which a majority of the judges concluded that the Office had not adopted a rule allocating the burden of persuasion with respect to the patentability of proposed substitute claims. In light of Aqua Products, as well as public comment provided in response to a Request for Comments, the Office proposes to issue specific rules applicable to motions to amend.
Continue Reading Resolving AIA Amendment Burdens Unlikely to Move the Needle at the PTAB

Federal Gov’t & Federal Contractors in the Court of Federal Claims – A Legal Relationship?

Federal government contractors are protected from patent infringement suits when infringing activities are performed pursuant to a contract with the Federal Government. 28 U.S.C. § 1498(a).  Under § 1498, rather than sue such contractors directly in a Federal District Court, patentees must instead file a suit against the United States in the Court of Federal Claims.  Typically, contractors will intervene thereafter and become third party defendants.

When these contractors lodge IPR petitions with the PTAB, they often take the view that since they were never served with a “complaint for infringement,” that the one year anniversary of the 1498 complaint does not preclude such filings under 35 U.S.C. § 315(b).  But a recent case will explore the legal relationship of the Federal Government to its contractors, and whether at least a privity relationship exists for purposes of applying 315(b) to the complaint anniversary date.
Continue Reading PTAB Considers RPI/Privy Relationship of Federal Gov’t in Related Court of Federal Claims Dispute

Informative Decisions Address Design Choice Considerations

Today, the Patent Trial & Appeal Board (PTAB) designated two ex parte appeal decision informative, Ex parte Spangler, Appeal No. 2018-003800 (Feb. 20, 2019) & Ex parte Maeda, Appeal No. 2010-009814 (Oct. 23, 2012)

The Spangler decision (here) affirmed an examiner’s obviousness rejection determining that…

October Boardside Chat Looks Back at FY2019

Today, from noon to 1 p.m. (EST), the Board will conduct its October Boardside Chat.  The October discussion will cover 2019 changes to ex parte appeal and AIA trial procedures.

The FY2019 changes include the Motion to Amend pilot program, latest updates to the AIA Trial Practice Guide,…

Indemnification “Significant and Meaningful Relationship”

Extending a trend started last spring, the PTAB is looking more closely at AIA trial petitions coming from separate parties.  For parties seeking to pursue an AIA trial proceeding, this trend should give pause to those considering participation in Joint Defense Groups, or linked to another petitioner by business arrangement or indemnification obligation.

Last week, in PayPal Inc. v. Ioengine LLC, the Board explained that a customer/supplier relationship, together with indemnification obligation is enough to be considered a “same petitioner” in a General Plastic analysis.
Continue Reading PTAB Focuses on Customer/Supplier Relationship in 314(a) Denial

Director Determinations Cannot be Made by an AIA Trial Panel

Motion practice in AIA trial proceedings is typically limited to the handful of motions that may be filed as  a matter of right. (Pro hac, Joinder, Exclude, Amendment).  Prior authorization must be received from the assigned APJ panel to file any other motion.  Such authorization is usually pursued via a party teleconference with the Board.  To date, these teleconferences have been conducted as a motion hearing of sorts where the panel considers the merits of the requested relief before granting authorization to file.  In denying authorization to file, the Board essentially decides the merits of the requested motion.  Recently a non-precedential decision of the  Federal Circuit has frowned upon this practice, finding that Motions for Additional Discovery may be filed as a matter of right.

In a case yesterday, the Court again knocked the practice of deciding issues that have not been fully developed via motion practice.
Continue Reading CAFC Again Faults PTAB for Denial of Motion Practice