PTAB Denies Party Submissions on Remanded IPR Appeal

A successful appeal to the Federal Circuit from the Patent Trial & Appeal Board (PTAB) typically ends in vacatur and remand. As explained a few weeks back, surprisingly, the Board is not simply correcting the record on remand to maintain its earlier decision. Rather, in most cases a remand results in an eventual victory for the appealing party.

This practice gives hope to Patent Owners who may have been assuming that absent reversal, a remand was just a longer, more painful loss. Continue Reading PTAB Remands Looking More Like Eventual Wins for Patentees

April Boardside Chat: Ex Parte Appeals

The Patent Trial & Appeal Board (PTAB) will host its next “Boardside Chat” webinar this Thursday, April 5 from noon to 1 p.m. ET. The chat will discuss “Petitionable Matters, Objectionable Matters, and New Grounds of Rejections in Ex Parte Appeals.” PTAB Judges Adriene Lepiane Hanlon, Bruce Wieder, and Anthony Knight will present and address audience questions.

Webinar Access Information for Apr. 5, 2018 at noon, E.T.: 

Click on the link:  https://uspto-events.webex.com/uspto-events/onstage/g.php?MTID=e5d19dd86cb630ad37297aa0f92d1f2af

Event/Access #:  996 735 788

Event password:  AprilChat2018

Access code: 996 735 788

Stay To Force PTAB Outside of Statutory Time Limit?

Today, the Federal Circuit issued a stay of further Patent Trial & Appeal Board (PTAB) proceedings pending the St. Regis Mohawk Tribe’s sovereign immunity appeal. The appeal challenges the Board’s determination that the Tribe is not immune from its proceedings as a sovereign entity. As a reminder, the tribe is alleged to be the new owner of Allergan patents relating to the ophthalmic Restasis®  Continue Reading CAFC Shuts Down PTAB Pending St. Regis Mohawk Tribe Appeal

PTAB Remand Not Always Deja Vu

When appealing a decision of an administrative agency such as the Patent Trial & Appeal Board (PTAB), reversal is quite rare. This is because rarely will a pure question of law (with no facts in dispute) control the outcome of such an appeal  Rather, a typical PTAB appeal to the Federal Circuit will dispute whether the agency record fully supports its decision, or is complete with respect to required fact finding. In these cases vacatur and remand are appropriate.

Since 2016, as the volume of appeals from the PTAB has increased, so to has the number of remands to the agency. Where a PTAB record is incomplete, one might expect the agency to simply remedy the shortcoming on remand to maintain its earlier decision. However, two years of recent statistics reflect a more balanced outcome. Continue Reading PTAB Remands from the CAFC: Mixed Outcomes

PTAB Trial Practice Changes & Evolution of Parallel Litigation

Two separate webinars this week for those looking to keep abreast of PTAB evolution and related litigation practices.

First, up, this month’s edition of the PatentsPostGrant.com free webinar series will be held on Thursday, February 22nd @ 2PM (EST). Roadblock PTAB: Litigation Strategies & IPR Antidotes. Register (here)

Then, on Friday February 23rd @ 1PM (EST), join me and Rob Greene-Sterne of Sterne Kessler for PLI’s one hour briefing: PTAB Trial Practice After Wi-Fi One: Challenges and OpportunitiesThis program will explore the now softened 314(d) appeal bar and the anticipated expansion of appellate issues, as well as corresponding impacts on PTAB trial practices. Register (here)

Federal Circuit to Consider PTAB Sovereign Immunity Defense

State-affiliated entities enjoy immunity from suit in federal courts under the 11th amendment. To date, a handful of such entities have successfully leveraged the same immunity theory to avoid review of their patents before the Patent Trial & Appeal Board (PTAB). While still other Patent Owners have aligned themselves with Native American Tribes in an effort to benefit from their sovereign status in the hopes of avoiding PTAB review.

More recently, in Ericsson v. Regents of the University of Minnesota.the PTAB has determined that sovereign immunity is waived where the sovereign entity files an infringement suit. (here)

Appeal was taken from this decision this week. Continue Reading PTAB Sovereign Immunity Dispute Heads to CAFC

Next Week: PTAB BoardSide Chat & PatentsPostgrant.Com Webinar

Next week, brings back-to-back programs on PTAB appeals, both with a unique focus.

First, up, this month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday, January 31st @ 2PM (EST). The January Webinar is entitled: Building Winning PTAB Appeals to the Federal Circuit. The January PatentsPostgrant.com webinar is presented by R&G PTAB Practice Chair Scott McKeown & Appellate/Supreme Court Practice Chair Douglas Hallward-Driemeier who will offer their insights and experiences in building winning PTAB appeals to the Federal Circuit. Register (here). CLE credit will be provided (CA, NYC, VA).

The next day, February 1st, the USPTO will host its first bi-monthly Boardside Chat of 2018. This month’s offering is entitled: Design Patent Appeals. The chat will discuss “Design Patent Appeals and AIA Trial Proceedings.” Longtime PTAB Judges Jennifer Bisk, Romulo Delmendo, and Daniel Song will present and address audience questions. This topic is relevant for both ex parte appeal and AIA trial proceedings.

The Boardside Chat is free and open to everyone to attend. More information, including the WebEx access information, can be found at the PTAB “Boardside Chat” Webinar Series webpage (here).

WiFi One Opens the Door to Reconsideration of Well-Established PTAB Precedent

The Federal Circuit’s softening of the appeal bar (35 U.S.C. § 314(d)) in WiFi One will now allow the Court to consider matters unrelated to the merits of an institution decision, and in some cases, well-established precedent of the Patent Trial & Appeal Board (PTAB).

For example, in Oracle Corp. v. Click-to-Call Techs. LP Case IPR2013-00312, Paper 26 (Oct. 30, 2013), Section (III.A) was designated precedential.  This section explains that the dismissal of a lawsuit “without prejudice” nullifies the service of the complaint relative to 35 U.S.C. § 315(b).  The Federal Circuit announced last Friday that it can now consider this precedent, post WiFi One.

Continue Reading CAFC to Consider Popular IPR Time Bar Exception

January Webinar to Focus on PTAB Appeals to the CAFC

This month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday January 31st @ 2PM (EST). The January Webinar is entitled: Building Winning PTAB Appeals to the Federal Circuit. With the Federal Circuit’s affirmance rate for PTAB appeals hovering at around 70%, and with such appeals approaching 50% of the Federal Circuit’s docket, successful appellate advocates must not only stand out from the crowd, but build winning trial records from Day 1. This task is easier said than done with the accelerated pace of PTAB trials, limited discovery, and recent recalibration of the appeal bar in Wi-Fi One v. Broadcom.

The January PatentsPostgrant.com webinar is presented by R&G PTAB Practice Chair Scott McKeown & Appellate/Supreme Court Practice Chair Douglas Hallward-Driemeier who will offer their insights and experiences in  building winning PTAB appeals to the Federal Circuit. Register (here)

The formal portion of the webinar will begin at 2PM Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period. To attend the webinar please sign up via the link above. You will receive a registration confirmation email immediately. Two hours prior to the webinar you’ll receive another email with a link and instructions for joining the presentation. CLE credit will be provided (CA, NYC, VA).

WiFi One Touchstone: Closely Related to Patentability Determination?

As I predicted would happen last Spring, the Court held today in Wi-Fi One v. Broadcom (here) that the appeal bar is limited to Director determinations closely related to the preliminary patentability determination, or the exercise of discretion not to institute. As such, questions that may be fully and finally decided before a trial on the merits, such as 315(b), are no longer barred from appeal. Continue Reading CAFC Softens PTAB Appeal Bar