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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

Arthrex Argument Being Added to Briefs

As detailed back in December, the government has sought en banc rehearing in Arthrex. In its petition, the government revisited the bases for the Court’s October decision and encouraged the Court to also grant rehearing in the Polaris dispute so that the court might address forfeiture in Arthrex and reach the remaining issues in Polaris (which is distinguished in the petition as having seasonably argued the issue before the agency).

In its Reply of last week, the government once again focuses on forfeiture, arguing that raising an Appointments Clause issue on appeal is too late.  To emphasize the issue, the Reply lists all of the newly filed appeals raising the issue for the first time.
Continue Reading Gov’t Warns CAFC Over Growing Arthrex Docket

PTAB 2019: A Year of New Precedent

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

Gov’t Questions Fundamental Aspects of Court Decision

As promised, the government has now sought en banc rehearing in Arthrex. In its petition, the government revisits the bases for the Court’s October decision and encourages the Court to also grant rehearing in the Polaris dispute so that the court might address forfeiture in Arthrex and reach the remaining issues in Polaris (which is distinguished in the petition as having seasonably argued the issue before the agency)

I think it is safe to predict the CAFC takes this one up.Continue Reading En Banc CAFC to Debate PTAB Appointments Clause Issue

Informative Decisions Address Design Choice Considerations

Today, the Patent Trial & Appeal Board (PTAB) designated two ex parte appeal decision informative, Ex parte Spangler, Appeal No. 2018-003800 (Feb. 20, 2019) & Ex parte Maeda, Appeal No. 2010-009814 (Oct. 23, 2012)

The Spangler decision (here) affirmed an examiner’s obviousness rejection determining that…

Agency Discretion May Permit Joinder of New Party Claims

Issue joinder practice at the Patent Trial & Appeal Board (PTAB) has had a storied history to date.  As a reminder, the debate at the agency (spawning the now infamous “panel stacking” decisions) has been the proper scope of “joinder” under 35 U.S.C. § 315(c).  That is, “can an existing petitioner (party) properly “join” its own proceeding to add a new issue to that proceeding, or is this statute limited to more traditional notions of party joinder?”

From the agency’s perspective, this issue was finally settled by the Precedentiial Opinion Panel (POP) decision in Proppant Express Investments v. Oren Technologies, Case IPR2018-00914 (PTAB Mar. 13, 2019) (Paper 38)  In this decision, the POP held that 35 U.S.C. § 315(c) provides discretion to allow a petitioner to be “joined” to a proceeding in which it is already a party, and provides discretion to allow joinder of new issues into an existing proceeding (here).

Since Proppant, the Federal Circuit  has had an opportunity to consider PTAB issue joinder practices  in Facebook, Inc. v. Windy City Innovations, LLC. , and judging by the oral argument, is not in favor of endorsing this practice.  But, the USPTO has indicated in a brief (amicus brief) submitted post Facebook oral argument, that regardless of the outcome in Facebook that issue joinder practice may live on. 
Continue Reading PTAB Issue Joinder Could Live On Despite CAFC Outcome

Thursday: AIA Hearings and Ex Parte PTAB Appeals

The Patent Trial and Appeal Board (PTAB) will host a Boardside Chat webinar this Thursday, August 22, from noon to 1 p.m. ET about hearings, including both ex parte appeal and AIA hearings. Chief Clerk Erica Swift and Deputy Clerk Kulunie Cannon will present. Topics will include…

Issue Joinder on the Way Out?

As discussed some months back, the Patent Trial & Appeal Board’s (PTAB) new Precedential Opinion Panel (POP) decided its first case in Proppant Express Investments v. Oren Technologies, Case IPR2018-00914 (PTAB Mar. 13, 2019) (Paper 38)  In this decision, the POP held that 35 U.S.C. § 315(c) provides discretion to allow a petitioner to be “joined” to a proceeding in which it is already a party, and provides discretion to allow joinder of new issues into an existing proceeding (here).

This practice, known as “issue joinder” is now before the Federal Circuit. And, the Court does not appear receptive to the agency’s statutory interpretation.
Continue Reading CAFC Poised to Strike Down PTAB’s First POP Decision

Precedential Opinions & Trial Guide?

The Federal Circuit’s en banc opinion in In re Aqua Products was as massive as it was unfulfilling. This was due, in part, to the court’s struggle with how to weigh policy of the agency that was not based upon the traditional notice-and-comment rule making of the Administrative Procedure Act (APA). Given the significant hurdles in issuing such rules (especially under the Trump administration’s 2-for-1 cancellation requirements) it is certainly understandable that an increasing amount of the agency’s guidance on AIA trial practice is provided by way of precedential Board decisions, and such documents as the Trial Practice Guide.

Yet, when the public is held to standards that were not promulgated in accordance with traditional APA practices, the Federal Circuit is left to decide what if any deference should be applied to such policies.
Continue Reading Precedential PTAB Opinions to Drive APA Challenges

Article III Review of Agency Action May Once Again Interest SCOTUS

A perceived lack of Article III standing in appeals from the Patent Trial & Appeal Board (PTAB) to the Federal Circuit can doom an appeal. More recently, the Court has had an opportunity to explore “competitor standing” as a potential avenue for standing of close competitors. But, the Court has applied a patent-specific view to distinguish from controlling precedent on the impact of the “government action” of competitor standing.

A few weeks back in Gen. Elec. Co. v. United Techs. Corp., (hereinafter “GE”) the court made clear that for the competitor standing doctrine to apply, the government action must change the competitive landscape by, for example, creating new benefits to competitors. Building on its earlier decision in AVX Corp. v. Presidio Components, Inc., the Court found that the government action with respect to a unique property right like a patent, militates in favor of a narrower application of the precedent, drawing competing views from the Court.

This debate seems destined for cert petition.Continue Reading Competitor Standing to Evolve for PTAB Appeals?