CAFC Side Steps 314(a) Controversy on Procedural Grounds

As detailed back in September, there were separate attacks launched against the PTAB’s practice of denying AIA trial petitions in favor of advancing district court trial dockets. The first was a mandamus petition filed with the Federal Circuit challenging a particular IPR denial, the second an APA action filed by a number of large tech companies challenging the agency’s Fintiv practice as being in excess of its jurisdiction.

Last week, the Federal Circuit denied the mandamus, finding the matter barred from appeal in a straightforward opinion.
Continue Reading Challenge to Fintiv Fails on Mandamus

CAFC Refuses Remand on 112 6th Deficiencies

When challenging claims at the Patent Trial & Appeal Board (PTAB), Rule 42.104(b)(3) requires a Petitioner to identify the specific portions of a challenged patent’s specification that describe the structure corresponding to a claim’s means-plus-function claim feature.  Of course, if a petitioner fails to do so, the Board will reject Petitioner’s challenge for failing to comply with the Rule.  To the frustration of petitioners, however, where that failure is based upon the shortcomings of the challenged patent itself, the PTAB is  precluded from officially making such an indefiniteness determination.  Instead, the Board will simply conclude that the rule has not been satisfied.

A week back, the Federal Circuit reiterated this shortcoming of the IPR statutes.
Continue Reading PTAB Can’t Find Means-Plus-Function Claims Defective

New Pilot Will Not Accelerate Post-Grant Matters

Last week the United States Patent and Trademark Office (USPTO) announced plans for the Patent Trial and Appeal Board (PTAB) to begin accepting petitions for expedited resolution of ex parte appeals. The program, entitled “Fast-Track Appeals Pilot Program” launched July 2, 2020. (here)

But, the program may not benefit all appellants.  And it is important to understand that the program is not offering an appeal timeline (start to finish) that spans 6 months.
Continue Reading PTAB Fast-Track…Not So Fast

PTAB Appeals Focused on Merits

The SCOTUS re-calibrated the PTAB’s appeal bar in Thryv, Inc v. Click-To-Call Techs., LP., explaining that potential violations of 35 U.S.C. § 315(b) were too closely related to the institution determination of the agency to escape the appeal bar.  Since that time, the Federal Circuit has considered at least two additional issues that it may no longer have the ability to consider on appeal: RPI/privity disputes, and determinations that a patent qualifies as a Covered Business Method (CBM) patent.

As to RPI/privity, those disputes are now barred from appeal.
Continue Reading Thryv Continues to Simplify CAFC Appeal Docket

SCOTUS Clarifies PTAB Institution Issues Not Subject to Appeal

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

Cert Petitions Pursue Takings Clause Argument

Last week, Arthrex filed a petition for certiorari challenging the holding of the Federal Circuit that its Appointments Clause challenge was forfeited. (a companion case to the one that has received all of the notoriety).  In its first petition for certiorari, Arthrex also pursues a different constitutional issue based on the Takings Clause of the Fifth Amendment, like other recent filers.

I expect this argument to soon be added to the list of failed constitutional challenges to the PTAB.

Continue Reading Takings Clause Challenge to PTAB Trials?

PTAB May Not Create a New Ground of its Own, But Can Rely on Additional Art in Support of a Petition Ground

Recently, the Federal Circuit in Philips v. Google (here) explained that the Patent Trial & Appeal Board (PTAB) may only institute trial on grounds presented in a trial petition. 948 F.3d 1330 (Fed. Cir. 2020).  That is, the Board may not formulate its own grounds from the petition art.  This is because the Supreme Court has explained the AIA statutes do not “contemplate a petition that asks the Director to initiate whatever kind of inter partes review he might choose.” SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018).

But, as explained this week in Lone Star Silicon Innovations LLC v. Iancu (here), this prohibition against agency formulated grounds does not prevent the Board from looking to additional references for evidentiary support (such as general knowledge in the art) to support an existing trial ground.
Continue Reading New PTAB Ground or Just Supporting Evidence?

GE Argues CAFC Patent Exceptionalism

Back in July, I predicted that competitor standing in PTAB appeals was a debate destined for cert petition. That petition was filed last Wednesday in Gen. Elec. Co. v. United Techs. Corp. (“GE”)

As a reminder, in GE the Federal Circuit held that for the competitor standing doctrine to apply in appeals from the PTAB, the government action must change the competitive landscape by, for example, creating new benefits to competitors (citing its earlier decision in AVX Corp. v. Presidio Components, Inc.).  The Court further explained that the government action with respect to a unique property right like a patent, militates in favor of a narrower application of the precedent. The holding in GE drew a concurrence from Judge Hughes (as bound by precedent), which explained his differing views on the Court’s competitor standing jurisprudence.

GE has pressed the views of Judge Hughes in its cert petition.
Continue Reading Competitor Standing in PTAB Appeals Pursued to SCOTUS

CAFC Holds Petitioner to PTAB Choice

While we await the en banc determination in Arthrex/Polaris, there have been a number of recent remands back to the PTAB (i.e., where the Appointments Clause issue was first raised in the opening appellate brief). Given this, it may be that the Federal Circuit remains unimpressed with the government’s argument that failure to raise the issue before the PTAB results in forfeiture of the argument.  Still, given the supplemental briefing in Polaris as to the sufficiency of the Arthrex remedy, I am still expecting that at least this aspect of the debate is taken up en banc.

In the meantime, the Federal Circuit has made clear that the Appointments Clause issue will not benefit failed PTAB petitioners.

Continue Reading No Arthrex Relief for Failed PTAB Petitioners