At 1PM today, the Supreme Court of the United States will hear arguments in Cuozzo Speed v. Lee. As previously discussed, in its petition for certiorari Cuozzo presents two issues for review:
1. Whether the court of appeals erred in
Over the past week, amicus briefs supporting the respondent (U.S. Gov’t) have been filed with the Supreme Court in Cuozzo Speed v. Lee. These ffilings are linked below, including my own for Unified Patents.
Patentees have lamented the inability to submit new, testimonial evidence via preliminary response since the inception of the Patent Trial & Appeal Board (PTAB). It was argued that since AIA trial petitions almost always included testimonial evidence, the inability to respond in kind was procedurally lopsided in favor of challengers. Because of this perceived imbalance, patentees insisted that trial institution was a foregone conclusion. Of course, if this patentee criticism were valid, far more trials would conclude favorably to patentees once such evidence is entered (it is permitted later, during trial).
Continue Reading Patentees Beware: New PTAB Evidentiary Option Might Not Help
The USPTO has issued new final rules today to make targeted modifications for AIA trial practice before the Patent Trial and Appeal Board (PTAB). (here) These amendments to the rules were initially proposed to the public in August 2015. The rule changes apply to all
Next Tuesday, April 5th (12-1PM (EST)) the PTAB will host another Boardside Chat webinar to address the growing complexity of relationships between AIA trial proceedings, patent reexamination, and patent reissue proceedings. The free webinar will be hosted by Administrative Patent Judges (APJs) Joni Chang and Sally Medley. The webinar
This past Wednesday the U.S. Department of Justice filed its Respondent Brief in Cuozzo Speed v. Lee. (here) Amicus filings in support of the Respondent are due to be filed by March 30th.
The stay of the VirnetX IPR only lasted a little over a week. As a reminder, the VirnetX writ of mandamus was filed with the Federal Circuit on March 4th. The writ argued that the joinder exception of 315(b) is applicable only to timely filed petitions in which the request
Next Monday, the most widely attended post-grant program of the year returns, the Practicing Law Institute’s USPTO Post-Grant Patent Trials 2016. I am pleased to return as chair of this program along with Rob Greene Sterne of Stern Kessler Goldstein & Fox. These day-long, CLE programs are always the highlight
The petitioner briefing to date in Cuozzo Speed Technologies, LLC v. Lee (No. 15-446; S.Ct) emphasizes the “examinational” application of the USPTO’s broadest reasonable interpretation (BRI). The briefing argues that since PTAB trials are “adjudicative” as opposed to “examinational,” BRI could not have been contemplated by Congress for adjudicative proceedings (since, it is argued, that such adjudicative proceedings do not provide the same degree of amendment opportunity as examinational proceedings). Yet, absent from the petitioner’s opening brief, save a single footnote, footnote 6, is any acknowledgement that patent interference is an adjudicative proceeding that has applied BRI for decades to both involved applications and patents — and also limits amendment options to a motion process — just like Inter Partes Review (IPR).
That amending in patent interference operates in the same manner as AIA trials should hardly be surprising given that the AIA trial rules were built upon the existing patent interference framework. Can this decades-old, adjudicatory framework, that both uses BRI and requires amendment by motion, be distinguished by Cuozzo?
Continue Reading Long-Standing Use of BRI in Interference a Hurdle for Cuozzo
There has been a fair amount of controversy regarding issue joinder practices at the PTAB. But, to date, the language of 315(b) that seemingly excuses late IPR petition filings has been taken at face value. That is, while 315(b) limits initiation of a an IPR to within 12 months of service of a complaint for infringement of the subject patent, the last sentence explains that “the time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).”
In a writ of mandamus filed with the Federal Circuit last week, the exception of 315(b) is argued as applicable only to timely filed petitions in which the request for joinder occurs outside of the 12-month window. In other words, the exception does not permit petitioners that have already missed their 12-month window to remedy the problem via joinder.
Continue Reading Mandamus Questions PTAB Joinder Practices