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
Late last month, in In re Vivint, Inc., the Federal Circuit tackled the question of whether a post-issuance review proceeding (in this case, ex parte reexamination (“EPR”)) was available to a challenger that repeatedly filed another post-issuance review proceeding (in this case, inter partes review (“IPR”)) to forward the very same argument. The court held that, while the EPR request had shown substantial new questions of patentability, “the Patent Office abused its discretion and acted arbitrarily and capriciously under § 325(d).” As such the court vacated the decision and remanded to the Patent Office (“PTO”) with instructions to dismiss.
But, don’t expect this decision to be much more than a corner case.
Continue Reading Reexam After Failed IPR?
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
For those seeking some PTAB-related CLE, consider next Tuesday’s AIPLA webinar @12:30 (EST) entitled: Discretionary Denials Revisited: The New Politics of Fintiv. Register (here)
The program will explore the increasing politicization of the USPTO Director position, and what may be on the horizon relative to the uncodified discretionary
When challenging related patents at the Patent Trial & Appeal Board (PTAB), it is not uncommon to present similar grounds of unpatentability across related filings— for example, where the claim sets are substantially similar. In such scenarios, it is expected that the PTAB will arrive at consistent determinations across the filings. Of course, there is no guarantee, that the same judge will decide all of the cases. In such instances, there is a possibility of inconsistent results, especially where the challenges are advanced at different times.
For example, party A might challenge a parent patent in an IPR, and lose on a question of obvious under 103. When a continuation patent issues a bit later, Party A may attempt to challenge the continuation on the same grounds (perhaps bolstered by a better presentation or additional evidence). In such a scenario, is the Board free to change its mind? Or is the Board collaterally estopped given the earlier determination, and the same party pursuing the same argument?
Continue Reading Collateral Estoppel in AIA Trial Proceedings
Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469 (PTAB Feb. 13, 2020) (Paper 6) (precedential)
This decision denies institution of an inter partes review based on 35 U.S.C. § 325(d), explaining that the Board uses a two-part framework for exercising
There were a number of high profile developments at the Patent Trial & Appeal Board (PTAB) in 2019. New procedures for amending claims, Practice Guide updates to thwart parallel petition filings, a successful constitutional challenge based on the Appointments Clause, and another SCOTUS review of the PTAB appeal bar. But, not all of these developments impact the day-to-day life of PTAB practitioners. Of greater interest to PTAB practitioners are the developments that change the game for the average AIA trial, with this in mind, below are my Top 5 PTAB Practitioner Developments of 2019.
Continue Reading Top 5 PTAB Decisions of 2019 for PTAB Practitioners
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 been steadily rolling out new precedent since establishing it Precedential Opinion Panel (POP). Last Friday a few more decisions were added to the growing pile. The newest decisions: two precedential and one informative serve to clarify 325(d) and 314(a) considerations, while the third informative decision warns against excessive and voluminous prior art presentations.
Continue Reading PTAB Continues to Roll Out Precedent