This Thursday April 1st, Unified Patent’s Insight Webinar series (free) will present its April offering at 12PM(EST):
The PTAB and the Western Way: How Judge Albright’s Court and the Board Interact
In the webinar, the panel will explore the impact of the Western District of Texas on the patent
I’ve read a number of articles over the past few days that argue since the mandamus on Fintiv failed in Mylan Laboratories Ltd. v. Janssen Pharmaceuticals N.V., that this decision somehow forecloses the relief sought in the APA suit against the USPTO — not even close. The question of appellate jurisdiction over denied institution decisions (or what would amount to a proper mandamus) has absolutely nothing to do with the direct challenges made by the plaintiffs in the pending APA lawsuit.
Indeed, I expect the application of Fintiv to be enjoined within weeks (if not sooner).
Continue Reading PTAB Fintiv Factors Likely to Be Enjoined as APA Violation
This Thursday the Patent Trial & Appeal Board (PTAB) will offer its first Boardside Chat of 2021, from noon to 1 p.m. (EST).
Several administrative patent judges of the PTAB will cover:
Upon taking the reins at the USPTO, Director Iancu made clear that he believed the Patent Trial & Appeal Board (PTAB) was cancelling too many patent claims in AIA trial proceedings. Of course the PTAB was simply implementing the statutory framework given to it by Congress – and the Federal Circuit was largely affirming the PTAB’s work. So, the only possible “fix” for the Director was to rebalance the rules/practice to his liking (i.e., in favor of patent owners).
And he changed as much as he could, as fast as he could.
Continue Reading Activist Director Moves On – What’s Next for the PTAB?
Earlier this week I laid out my Top 5 PTAB cases of 2020 for PTAB Practitioners, focusing on those cases that changed day-to-day practices before the agency. Like the practitioner list, my Top 5 PTAB developments of 2020 for District Court Litigators will focus on those practical PTAB developments that will impact parallel litigation practices outside of the agency.
In 2020, there were a number developments of interest to litigators, from litigation forums where a PTAB challenge is foreclosed or highly unlikely, to stipulations for avoiding PTAB discretionary denials, and new risks of collateral estoppel across a litigated portfolio.
Continue Reading Top 5 PTAB Developments of 2020 for District Court Litigators
In 2020, the Board continued to expand 314(a) discretion through numerous Precedential Opinion Panel (POP) decisions. These decisions, among a number of other developments, demonstrated a clear interest on the part of the current Director to rebalance AIA trial proceedings in the direction of patent owners. At the same time, the agency experienced increasing push back from larger innovator organizations — often subject to frivolous patent litigation— to rein in discretionary practices as it relates to favorite NPE venues. Rule packages attempting to codify 314(a) practices in a manner that would conform with the Administrative Procedure Act (APA) were killed, and lawsuits challenging the agency 314(a) practices were filed. In the background (as seems to occur every year) a constitutional challenge to the PTAB’s very existence made its way to the SCOTUS.
Another exciting PTAB year in the books. But before closing the books on 2020, here are my Top 5 PTAB decisions/developments that changed the game for PTAB practitioners.
Continue Reading Top 5 PTAB Decisions of 2020
On the heels of its precedent of a week or so back, the PTAB is adding more to the swirling hairball known as the “Fintiv factors.” First, the Board has clarified that agreeing to IPR estoppel proactively (before institution) and not pursuing such grounds in the parallel infringement proceeding,
A year or so back, I discussed a 314(a) dispute at the Patent Trial & Appeal Board (PTAB) where the Board considered a co-pending ITC investigation. In that decision, the Board instituted trial, pointing out that “the ITC does not have the authority to invalidate a patent and ITC decisions do not necessarily pertain to the issues raised in an inter partes review petition.” More recently the applicability of ITC investigations to a Fintiv factor 314(a) analysis was raised in Garmin International, Inc. v. Koninklijke Philips N.V., (IPR2020-00754).
In Garmin, the Board found that a co-pending ITC investigation favored a denial of institution. The case is noteworthy as in assessing the Fintiv factors, the Board effectively made clear that any petition concurrent with an ITC filing should be denied.
Now the dispute is up for consideration by the Precedential Opinion Panel (POP).
Continue Reading 314(a) To Block All ITC Disputes from PTAB?
This coming Thursday, December 10th, from noon to 1 p.m. ET, the Patent Trial & Appeal Board (PTAB) will offer its next Boardside Chat Webinar to discuss several aspects of PTAB trial proceedings.
Lead Judge Bill Saindon will present the results of the PTAB’s recently updated multiple petitions
Last Friday the Patent Trial & Appeal Board (PTAB) added to its list of precedential cases. The new precedent clarifies when RPI disputes will be considered by the Board, what factors will be considered for petitions lodged by member organizations, and whether joinder can be