In tomorrow’s Federal Register, the USPTO is announcing a public symposium on issues relevant to the protection of trade secrets, and to assess recent developments such as the Defend Trade Secrets Act (DTSA). The symposium will be held on May 8, 2017, from 9 a.m. to 4 p.m. EDT.
Today the USPTO announced its PTAB Procedural Reform Inititative. The initiative seeks feedback on the nearly five years of historical data and user experiences to further shape and improve Patent Trial and Appeal Board (PTAB) trial proceedings, particularly inter partes review (IPR) proceedings. The purpose of the initiative is to ensure that the proceedings are as effective and fair as possible within the USPTO’s congressional mandate to provide administrative review of the patentability of patent claims after they issue.
Continue Reading USPTO Soliciting Ideas on PTAB Procedural Reform
Earlier this week, the CAFC denied en banc rehearing in Google v. Unwired Planet. While the denial was largely expected, Judge Hughes’ concurrence foreshadows the debate to come in WiFi One.
That debate, at least for Judge Hughes, is separating matters of agency discretion from questions of constitutionality and/or ultimate statutory authority.
Continue Reading En Banc Denial in Unwired Planet Previews WiFi One Debate
With TC Heartland still on deck a the Supreme Court, a look back at the Court’s most recent patent decision SCA v. First Quality by guest poster, Gary Cohen. Some of my thoughts, are posted on IPwatchdog (here). Back to PTAB news/notes next week.
SCA v. First Quality: Limiting the Application of Laches
By Gary Cohen1
On March 21, 2017, the U.S. Supreme Court (“SCOTUS”), in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 15-927 (2017), reversed an en banc opinion from the Federal Circuit holding that laches could be asserted against a claim for damages incurred within the Patent Act’s 6-year limitations period of 35 USC §286. The SCOTUS asserted that the en banc opinion impermissibly invoked laches to bar legal relief, with such invocation being unwarranted in view of both the SCOTUS’ holding in Petrella v Metro-Goldwyn-Mayer, Inc., 572 U.S. _____ (2014) and the caselaw preceding the Patent Act of 1952.
Continue Reading Final Thoughts on Patent Laches
Back on May 1st, the Patent Trial & Appeal Board (PTAB) began to accept new testimonial evidence with patentee preliminary responses. The PTAB implemented this change to address complaints that patentees were disadvantaged by previous rules precluding such evidence from accompanying a preliminary response to the petition. It was argued that the previous rules were especially imbalanced as almost all petitions were accompanied by petitioner declaration evidence. I had my doubts.
Continue Reading PTAB Preliminary Response Evidence Remains Unpopular
A Petition for Rehearing may be filed in an AIA Trial Proceeding to challenge an Institution Decisions (ID) or a Final Written Decision (FWD) of the Patent Trial & Appeal Board (PTAB). Of course, a successful Petition for Rehearing is a rare occurrence. Fewer than 5% of cases to date have seen a successful Petition for Rehearing.
In any event, both patentees and petitioners alike sometimes find it necessary to pursue rehearing for any number of strategic goals. But, given the lack of a mandated deadline for such decisions, the question becomes: “How Long is the Wait?”
Continue Reading Rehearing Pendency in AIA Trial Proceedings
For those seeking some PTAB related discussion/CLE this week, there are a few exciting programs.
IPR estoppel is established under 35 U.S.C. § 315(e)(2), which provides that “the petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . may not assert . . . in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” (emphasis added). Once upon a time, the reasonably could have raised component was thought to refer to art that could have been raised in the initial petition — at least, that was what Congress seemed to intend. Since that time, the Federal Circuit has made clear that this statutory estoppel is linked to the grounds presented at trial, and not those included in the petition and rejected by the Board as redundant.
In Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016), the Court held that statutory estoppel does not apply to grounds denied by the Board as redundant. The Court reasoned that estoppel cannot flow from grounds that are not part of the trial or any resulting decision from which estoppel can attach.
Next week brings the now Sold Out, Inaugural PTAB Bar Conference. The PTAB Bar was founded to help establish best practices for this unique forum, foster communication among stakeholders and the PTAB, and aid practitioners in staying abreast of rule making, procedure and PTAB jurisprudential evolution.
Back in 2014, the Federal Circuit determined the standard for a USPTO indefiniteness analysis in In re Packard (here). This standard was more deferential to the agency as compared to the district court’s “reasonable certainty” standard later enunciated in Nautilus v, Biosig Instruments Inc. When Packard issued, I questioned whether that standard could be argued to apply to post-grant proceedings. This was because the Court’s determination in Packard was deeply rooted in patent examination practices.
Will the CAFC pull the rug out from under the PTAB’s application of Packard in AIA trails?
Continue Reading Is In re Packard the Correct Standard for AIA Trials?