Federal Circuit Affirms Hunting Titan POP Decision

In Hunting Titan, Inc. v. DynaEnergetics GmbH & Co. KG, Inc., IPR2018-00600. The PTAB’s POP panel reviewed the denial of a Motion to Amend based upon a panel’s sua sponte modification of a petitioner’s proposed ground (here).  In reversing that determination, the POP found that such a sua sponte action should be a “rare circumstance.”  For example,  where there is a readily identifiable patentability concern apparent in the record.

At the time, I pointed out that when a petitioner presents a 103 ground that in reality is a 102 ground, I could not imagine how such a circumstance was not readily identifiable, and rare.  While seemingly agreeing with me, the Federal Circuit nonetheless affirmed the POP panel.
Continue Reading No PTAB Duty to Separately Examine Amended Claims

Virtual CLE Program January 24 – 27th

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

October Webinar to Debrief on Leahy Bill

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

Bill Released – Iancu Era Rebuked

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

First Boardside Chat of the Year

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:

  • Final rules related to institution of trials, including elimination of the presumption at institution that a genuine

Litigators Amending Claims?

Patent prosecution bars are prophylactic provisions typically included in district court protective orders when there is a risk that a recipient of confidential technical information may use (inadvertently or otherwise) that information while prosecuting patent applications in related technology.  Prosecution bars eliminate this risk by preventing individuals who have access to technical information from directly or indirectly drafting, amending, advising, or otherwise affecting the scope of patent claims in a technical field related to the patents at issue.

Many prosecution bars are now written to cover PTAB proceedings, such as IPRs (since amendment is possible). However, whether district court litigators will be permitted to participate in PTAB proceedings may depend on the particular district where the subject patent is being litigated.
Continue Reading Prosecution Bars & The PTAB – An Evolving District Court View

Director Memo Decides Against Standard of In Re Packard

Back in 2018 I noted the current PTO administration had backed away from a dispute on the appropriate 112 standard to apply in AIA trials (after intervention by the previous PTO administration). That is, the initial intervention sought to support the application of the standard enunciated by In re Packard to AIA trial proceedings.  After Director Iancu came on board, that Intervenor Brief was withdrawn.

Today, the PTO formally announced (via memorandum) that the Nautilus standard applies to AIA trials – settling an open question….at least for the time being.

Continue Reading PTAB Applies Nautilus 112 Standard to AIA Trials…For Now

CAFC Holds IPR Claim Amendments Subject To Full Patentability Examination

Yesterday, a divided CAFC panel held in Uniloc 2017 LLC v. Hulu, LLC (here) that during an IPR proceeding, the Board may consider any patentability challenge—including subject matter eligibility—if the Patent Owner moves to amend its claims under § 316(d).  The Court continues to emphasize the agency’s duty to the public in assessing patentability of the patent claims it issues.
Continue Reading 101 is Fair Game for Assessing PTAB Amendments

Settlement by Amendment Scenario Thwarted in PTAB Rehearing Reversal

Last March, I explained the strange scenario playing out in ZTE USA Inc., & LG Electronics Inc. v. Cywee Group LTD. (IPR2019-00143).  In ZTE, the original petitioner was joined upon institution by a second petitioner.  As is often the case, the joined petitioners were competitors.  (A joined petitioner takes an understudy role in AIA trial proceedings, absent a settlement between the original petitioner and the patent owner).

Rather than settle, the original petitioner in ZTE decided not to oppose the Patent Owner’s amended claims, or for that matter, even request oral argument.  And, given that the original petitioner was at least still present in the proceeding, the PTAB refused to allow the second petitioner to step in and oppose the amended claims. My previous post pointed out that this was bad policy that could lead to anticompetitive behavior in joinder scenarios.

Last Friday, the PTAB reconsidered its initial decision, and in the wake of Hunting Titan, reversed its earlier decision to allow the amendment opposition of the second petitioner.
Continue Reading PTAB Allows Joined Party to Oppose Amendment in Place of Original Petitioner

Roughly 10% of AIA Proceedings Involve Amendments

Earlier this week the Patent Trial & Appeal Board (PTAB) released the sixth installment of its Motion to Amend Study. The study tracks and analyzes all motions to amend filed in America Invents Act trials, including pilot motions, through the end of March 2020.  Not surprisingly, this installment doesn’t look much different than previous ones.  Amendment remains unpopular at the Board for strategic reasons, and those Patent Owners that do attempt amendment are rarely successful.

While the 6th installment preview early results on the Amendment Pilot, it does not present success rates (which to date, are no better then the old program – also, not a surprise). While there was an initial flurry of Patent Owners opting for the Pilot program, that initial amendment popularity has waned.
Continue Reading PTAB Amendment Study Shows More of the Same