314(a)

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PTAB-legislation
Next Director Likely to Swing the Pendulum Back

PTAB 314(a) discretionary practices have followed the so-called “Fintiv factors” for years now. Under former Director Iancu (Republican appointee) Fintiv denials were so commonplace that overall institution rates dropped almost 10%. Current Director Vidal (Democrat appointee) recalibrated PTAB Fintiv practice via memo, and, as a result, Fintiv denials are relatively uncommon today. As Director Vidal’s memo is not committed to regulation, the next Director is free to swing the pendulum back.

It may seem that the likelihood of any such change is dependent on the outcome of the election given the tug-of-war of Trump/Biden appointees. But, it seems increasingly likely that that such a swing is inevitable regardless of election outcome.Continue Reading Will PTAB Fintiv Practices Be Reinvigorated Under the Next Director?

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Missed Opportunity & Further Patent Owner Headaches

The wait is finally over! (no not Taylor Swift’s new album…think nerdier….like way nerdier)

Last Friday the USPTO finally released its Notice of Proposed Rulemaking (NPRM) directed to Patent Trial & Appeal Board Practices (here) a year after its overly-ambitious Advanced NPRM (ANPRM) was released. While readers of this blog already knew what was going to be in the NPRM, the release of the NPRM at least confirms that the agency still intends to move something forward in the waning months of the Vidal administration. Whether the agency will get anything over the finish line in time is far from clear.

The NPRM is most noteworthy for what it does not include — every underdeveloped/legislative idea of the ANPRM. But that was entirely predictable. Perhaps more concerning is the absence of a codification of current Fintiv 314(a) practices. Such discretionary denial practices exploded under the previous Director only to be reined in under Director Vidal via a guidance memo. This ping-pong action will continue across administrations unless and until regulations are issued. The next Director will almost certainly reinvigorate Fintiv practices regardless of election outcome (more on that later this week)

As to the content of the NPRM itself, some marginal value and an oddly misguided option that hurts Patent Owners and risks derailing the entire proposal.Continue Reading Limited PTAB Rule Proposal Marred by Ill Conceived Briefing Changes

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Valve Precedent Reined In by Director Review Order

Last week the Director vacated IPR denials based upon a misapplication of Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 (Apr. 2, 2019) (precedential). As a reminder, Valve, extended the discretionary denial practices set out in General Plastic of so-called “follow-on” petitions of a same party to that of related parties having a “significant relationship.” However, over the years the unique scenario of Valve started to be argued as applicable to more typical scenarios where different parties happened to be litigating the same patent in different, unrelated suits.

Most recently, the Valve drift ensnared an IPR petitioners Honda, GM and Ford based on earlier filings of a co-defendant (Volkswagen). In last week’s Director Review Order the Director made clear that where there are different accused products in different court proceedings there is not a “significant relationship” between filers outside of “relevant or extenuating facts or circumstances.”Continue Reading PTAB Recalibrates Related Party Analysis

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ANPRM an Unnecessary Slog to a Small Rule Package

It has been almost a year since the Patent Trial & Appeal Board (PTAB) released its Advanced Notice of Proposed Rulemaking (ANPRM) on AIA trial practices. As a reminder, the ANPRM was a sprawling collection of rule proposals and requests for public feedback. I previously pointed out that the proposal was unnecessarily ambitious and was destined to be bogged down for proposing to exceed the agency’s regulatory jurisdiction.

Well, the wait is almost over. Continue Reading Where are the New PTAB Rules?

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Empirical Studies Refute Oft Repeated Fallacies

The PTAB released two studies on historical petition filing practices this month. One directed to the frequency of so-called serial/parallel petition filings, and the other pertaining to Orange Book/Biologics patents. As with the agency’s earlier studies on these same topics (2021), the refreshed data again demonstrates that Orange Book patents are very rarely subject to AIA trial proceedings, and that abusive, serial petition filings have been effectively outlawed for years now.

Of course anyone that actually practices before the PTAB is well-aware of these realities. So, these empirical studies are primarily directed to the oft repeated criticisms of moneyed lobbyists and disingenuous critics at a time when both Congress and the agency grapple with wildly conflicting narratives.Continue Reading PTAB Data Belies Outdated Criticisms

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Failed PTAB Bill Reemerges For a 6th Time

Yesterday, U.S. Senators Chris Coons (D-Del.),Thom Tillis(R-N.C.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Hawaii) introduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act (here). Also yesterday, some of the very same senators introduced the Patent Eligibility Restoration Act of 2023. 

The co-introduction of these bills suggests a plan to drive compromise on patent eligibility.Continue Reading New PTAB Bill to Drive 101 Compromise?

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The ANPRM Proposals That Should Drop Out of the Process

Yesterday I highlighted the ANPRM proposals that are likely to make it into the NPRM this coming fall. Today, I’ll walk through the ones that I expect to be dropped, or at least heavily revised.

The vast majority of these “misfires” suffer from the same fatal deficiency — only Congress can provide for such modifications to the AIA. While the agency has substantive rule-making authority to implement the AIA, it does not have authority to implement regulations that effectively rewrite the AIA statutes themselves.

Given the push back from Congress on the apparent overreach of many of the ANPRM proposals, it is highly unlikely that the agency will carry such proposals forward to the NPRM. Continue Reading PTAB ANPRM – Misfires & Overextensions

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ANPRNM Comments Due Today

Today is the comment deadline on the USPTO’s recent Advanced Notice of Proposed Rulemaking (ANPRM). To date some 10,000 comments have been submitted.

At first blush the volume may seem impressive. Turns out, however, that the overwhelming majority of comments appear to be from random individuals spamming the agency with automated form submissions. These submissions do not even address the specific proposals of the ANPRM and offer little background, insight, or analysis other than a paragraph or two of “PTAB bad.” Others in the same spam bucket offer an identical rule proposal — to make the PTAB an opt-in system. Of course, the agency has no power to overrule a statute with a conflicting regulation to allow for opt-in.

Once the agency navigates through less than helpful dross, we can expect an NPRM in the fall responding to the actual ANPRM comments. My guess would be after the close of FY 2023 in early/mid October.

But, what will the actual NPRM look like? Certainly nothing like the ANPRM.Continue Reading PTAB ANPRM Comments & Spoilers

CLE Provided

This coming Thursday at 12PM (EST), IPWatchdog will host the free webinar entitled: PTAB Rules: The Good, The Bad & The Ugly. The webinar will cover the recent Advanced Notice of Proposed Rulemaking (ANPRM), preview stakeholder reactions, Congressional concerns, and discuss the most likely outcomes. Register (here)

With comments due from…

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Reexamination Deference?

The excessive scope of the PTO’s Advanced Notice of Proposed Rulemaking (ANPRM) on AIA Trial practices is deliberate as it provides favorable optics for the current administration.

Presenting all ideas to the public as opposed to culling out the more (ahem)… “creative,” showcases the open mindedness of the administration—particularly to patent owners. Perhaps a savvy move from a public relations perspective; not so much on the side of demonstrating competence to Congress. As the Director learned a week or so back when testifying before the House Judiciary, public proposals that appear to directly conflict with the AIA statutes, and/or encroach upon the role of the legislature are plainly unwelcome. That said, the warnings of Congress must be reinforced by stakeholder submissions.

The time is now for stakeholders to separate the wheat from the chaff through submitted comments (and in the process provide the agency political cover for the obvious cuts). And an absolute avalanche of comments is coming by the June 20th deadline.

I’ll post thoughts on as many of the proposals as possible here (on an ongoing basis), starting today with the worst of the worst. At the very top of the list of bad ideas is one that has the agency seemingly questioning the PTAB Trial Section’s very purpose. Continue Reading Proposal to Elevate Patent Reexamination Antithetical to AIA Statutes