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
Last month, the Patent Trial & Appeal Board (PTAB) issued an Order explaining that maintaining multiple, concurrent proceedings per patent presents a significant burden for the Board. More specifically, where the same claims are challenged across multiple, redundant petitions (i.e., pile-on), the Board pointed out that instituting trial across all redundant filings may undermine the Office’s ability to complete proceedings in a timely manner and places an unfair burden on the Patent Owner. 35 U.S.C. § 314(a).
That petition filer, which has filed numerous redundant petitions across a large patent portfolio, is now seeing the first of its redundant petitions being denied.Continue Reading PTAB Begins to Deny Pile-On Petitions from Same Petitioner
Back in January, I identified the Board’s expanding view of 314(a) discretion as the most significant development of 2018. In that earlier post, I predicted that one such 314(a)/325(d) case, NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., would be designated precedential in 2019.
Yesterday, the PTAB delivered on my prediction.
Continue Reading New PTAB Precedent: 314(a) Not Just for Follow-On Petitions
As I have mentioned on a few CLE panels as of late, the recent changes to the Patent Trial & Appeal Board’s (PTAB) Trial Practice Guide invite parties to suggest additional General Plastic factors. These factors are applied by the Board to determine whether to exercise its discretion to deny institution under § 314(a) in applicable cases. With the efficacy of 325(d) now muted after SAS (given it’s ground-by-ground based application), the potential “kill shot” offered by 314(a) has attracted more attention in recent Patent Owner Preliminary Responses.
With the new Trial Guide update barely a month old, the Board has already begun to expand its General Plastic factors. Two September decisions highlight the degree to which the Board may be more open to considering parallel litigation dynamics as additional factors.
Continue Reading PTAB Expands Equitable Considerations to Deny AIA Trial Petitions