IPWatchdog’s PTAB Masters 2022 (PTAB-palooza if you prefer), is coming next week!
The free, 4-day CLE program is virtual, and will focus on the PTAB from the viewpoint of both the patent owner and petitioners challenging patents. Topics will explore political and legislative developments impacting the agency in
Not much exciting going on at the PTAB until the new Director arrives in a few weeks. But, there was at least one new POP decision that is worth mentioning.
In Toshiba America Electronic Components, Inc. v. Monument Peak Ventures, LLC the Precedential Opinion Panel (POP) held that payment for an AIA trial petition is effective when received by the Treasury. I know, I know…try to contain your excitement.
Continue Reading PTAB Finds Wire Payment Effective When Received by Treasury
Senator Patrick Leahy (D) VT and Senator John Cornyn (R) TX have jointly drafted a new bill entitled the “Restoring the America Invents Act.” The Bill proposes to roll-back recent directives and policies of former USPTO Director Iancu, most notably discretionary denials of AIA trial proceedings in view
Well, the wait was not that long after all. Senator Leahy -VT (D) (with co-sponsor Senator Cornyn – Tx (R)) has today released the draft bill entitled “Restoring the America Invents Act.” The bill includes most of what I expected, with a handful of additional tweaks.
Below is a brief overview of all of the proposed changes.
Continue Reading Restoring the America Invents Act – What You Need to Know
Back In December I pointed out that the SCOTUS would likely tighten the PTAB appeal bar in Dex Media Inc. v. Click-To-Call Technologies, LP, explaining that, based on the oral argument, that several justices of the Court seemed to take the view that technical violations, such as 315(b) were too closely related to the institution determination of the agency. For example, Justices Kagan and Ginsburg explained it would be “a little bit silly to go back to square one” and that there was “something unseemly about nullifying the determination on the merits.” (transcript here)
Today’s majority decision, authored by Justice Ginsburg, presented no surprises.
Continue Reading PTAB Appeal Scope Recalibrated by SCOTUS
Congress created IPR to provide a “quick and cost effective alternative[ ] to litigation.” To fulfill that role, Congress limited a party’s ability to seek an IPR after commencement of civil litigation in two ways: (1) under § 315(a), no IPR may be instituted if the challenger filed a civil action challenging the validity of a patent claim before filing the IPR petition, and (2) under § 315(b), an IPR may not be instituted on any petition filed more than one year after the petitioner (or a real party in interest or privy) was served with a patent infringement complaint. These provisions are designed to control PTAB filings concurrent with civil complaints.
In a recent decision, the Northern District of California lamented that the statutory provisions permit a counterclaim of invalidity in a Reply. 315(a)(3). The Court interpreted such a counterclaim to be a “loophole.”
Continue Reading Declaratory Judgement Loophole at PTAB?
Earlier this week the SCOTUS heard arguments in Dex Media Inc. v. Click-To-Call Technologies, LP. As a reminder, the issue presented was the scope of the appeal bar of 35 U.S.C. § 314(d) for AIA Trial Proceedings. More particularly, whether disputed violations of 35 U.S.C. § 315(b) are barred from appeal.
The court initially addressed the appeal bar in Cuozzo, commenting that the appeal bar would not preclude all appeals, such as “shenanigans” where the agency exceeds its statutory bounds. The Court addressed the bar again,
Continue Reading PTAB Appeal Bar Likely to Be Tightened
The Patent Trial & Appeal Board (PTAB) has designated two more decisions precedential. The first addresses the 315(b) fling deadline, while the other pre-institution statutory disclaimer.
In addition to expanding precedent, the Board has also expanded hearing room space and options.
Continue Reading PTAB Adds Precedent & Hearing Room Features
Earlier this year the Patent Trial & Appeal Board (PTAB) instituted trial in Sling TV, L.L.C. et al. v. Realtime Adaptive Streaming, LLC, IPR2018-01331, Paper 9 (PTAB January 31, 2019). In doing so it created a new exception to the 315(b) time bar. The exception explained that the trigger for 315(b) — service of the complaint — was ineffective if the true patent owner was not responsible for the filing.
At the time, I questioned whether this exception made sense given that exclusive licensees commonly assert patents. And, the statutory language and legislative history did not seem to support such a narrow interpretation. The Precedential Opinion Panel (POP) decided the issue last week in GoPro, Inc. v. 360Heros, Inc., (IPR2018-01754).
The POP agreed.
Continue Reading No Exceptions to PTAB Time Bar
Earlier this year the Patent Trial & Appeal Board (PTAB) instituted trial in Sling TV, L.L.C. et al. v. Realtime Adaptive Streaming, LLC, IPR2018-01331, Paper 9 (PTAB January 31, 2019). In doing so it created a new exception to the 315(b) time bar. The