The PTAB will host its next Boardside Chat webinar on Thursday, April 17, noon to 1 p.m. ET, for a discussion of the new interim processes for PTAB workload management. The new processes concern institution of AIA trial proceedings and bifurcation of discretionary considerations from merits and other non-discretionary institution considerations.
Since Ebay v. MercExchange in 2006, patentees have lamented the practical loss of injunctions in most patent litigation. In the 20 years since, neither the courts nor Congress have shown any interest in revisiting or recalibrating Ebay. Of course, patent infringement complainants before the International Trade Commission (ITC) have always been guaranteed a form of special injunctive relief (exclusion orders), but the ITC’s “domestic industry” jurisdiction has always been construed narrowly by the agency. Given the limited jurisdiction, despite the desirable form of relief, ITC proceedings have been far less common than traditional district court litigation.
Last week, however, the Federal Circuit rejected the ITC’s longstanding and narrow view of domestic industry, potentially opening its doors to a far greater percentage of patentees. Independently, the USPTO’s Patent Trial & Appeal Board (PTAB) also withdrew its Biden-era discretionary guidance last week, which prevented discretionary denials under 314(a) on IPR petitions co-pending with an ITC action. The upshot of these near simultaneous developments is that the ITC is now available to a greater number of patentees, at a time when filing at the ITC may also effectively guarantee immunity from PTAB review.
That is a one-two-punch that no plaintiff-friendly Texas court can rival. Continue Reading Did Injunctions Just Make a Return to U.S. Patent Litigation?
As expected, the USPTO has now rescinded the June 21, 2022, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (Memorandum) issued by Former Director Vidal. The change is the first in many expected recalibrations of the new administration designed to return practices
It’s been an eventful (cough .. understatement.. cough) few months for USPTO judges and patent examiners as the Trump administration has seemingly targeted all federal agencies as wasteful money pits. Stakeholders are also struggling to make sense of USPTO job cuts, the impact of new agency leadership, and practice/workflow expectations going
We are two weeks away from the marquee PTAB practitioner event of 2025 – PTAB Masters! This high-level, interactive, limited enrollment program includes discussions on all aspects of the PTAB practice led by highly experienced practitioners and top thought leaders in the industry (and then there’s me). Topics include best practices for
Earlier this year, the USPTO Director clarified that competitors of a multi-defendant suit do not necessarily share a “significant relationship” consistent with PTAB precedent to justify a discretionary denial of an otherwise meritorious IPR petition. Ford Motor Co. v. Neo Wireless LLC (IPR2023-00763). Late last week, the Director considered another common multi-party litigation scenario. This time the Director explored the degree of interest (i.e., degree of cooperation, contractual obligation, or common purpose) necessary to create an RPI or privity relationship such that a 315(b) bar of one such party applies to the other — specifically, in customer/supplier indemnification scenarios.
In Luminex International Co. Ltd v. Signify Holdings B.V., the Director considered whether an indemnification obligation, absent more, demonstrates an RPI relationship, or creates privity between a customer and supplier.Continue Reading PTAB: Customer/Supplier RPI & Privity?
This past Thursday the Senate Judiciary Committee voted to advance the so-called Promoting Respecting Economically Vital American Innovation Leadership Act (PREVAIL) to the Senate floor — barely, by a vote of 11-10. The Bill is now eligible for a formal vote, at least in theory. But given the limited legislative calendar left in 2024, coming change to the Senate majority/committee leadership, and the significant opposition to anything related to drug pricing from democratic lawmakers, the Committee vote is little more than a symbolic gesture to create the appearance of traction for 2025.
If this development sounds eerily familiar its because a similar political show was put on last year at this exact same time. Continue Reading Prevail Act Limps Out of Senate Judiciary Committee
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?
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
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