Constitutional issues

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If the PTAB Fee Model is Biased, Patent Owners Have Much Bigger Problems

Recently, a due process challenge has been raised to the PTAB fee model in New Vision Gaming v. SG Gaming Inc.  The argument, in a nutshell, is that because the fees for AIA trial proceedings include a separate component for the trial, currently $15,000, and that collection of this fee makes up about 40% of the PTAB’s yearly budget, that this amounts to “a structural bias unlike any other in the federal executive branch.”

But, if the USPTO is making decisions solely based upon potential revenue, patent owners have much bigger problems.
Continue Reading Due Process Challenges to the PTAB Fee Model?

Federal Government Seeks Cert on Appointments Clause & Forfeiture Issues

On June 25th, the federal government filed a petition (here) for certiorari asking the Supreme Court to review the CAFC’s decisions in both Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Oct. 31, 2019) and Polaris Innovations Ltd. v. Kingston Tech. Co., Inc., No. 2018-1831 (Fed. Cir. Jan. 31, 2020).  This petition comes as no surprise after the CAFC’s fractured denial of an en banc Arthrex rehearing.

The Court has had occasion to consider Appointments Clause issues several times in recent years, most notably in Lucia v. SEC (2018), and again touching upon the issue last week in Seila Law LLC v. CFPB. 

Is there a SCOTUS appetite for the gov’t’s issues?
Continue Reading PTAB Appointments Clause Debate: SCOTUS Preview

Remands Held in Abeyance Until Arthrex Exhausts Appeals

Last Friday, the Chief Judge of the Patent Trial & Appeal Board (PTAB) issued a general order directed to the growing number of Arthrex remands, now totaling over 100 cases. The order (here) explains:

Several parties in Board matters that have been subject to [remand

…

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?

PLI Program to Focus on the State of the PTAB

This coming Monday, April 13th, the Practising Law Institute (PLI) will host a one-hour briefing at 3PM(EST) entitled: COVID-19 and PTAB Recalibration — Virtual Trials and Evolving Agency Workflows. (Register here).  I am pleased to once again team with Rob Sterne of…

CAFC Provides Last Word in PTAB Appointments Clause Debate

Given the remands that have been flowing back to the Patent Trial & Appeal Board (PTAB) from the Federal Circuit over the past few weeks, the writing has been on the wall as to en banc rehearing in Arthrex v. Smith & Nephew Inc.  The Court officially denied rehearing today.  Still, the 62 pages of differing viewpoints offered by the Court in its denial of rehearing essentially presented the Court’s collective reasoning anyway.

The per curiam opinion explained the earlier decision in the context of the dissenting views. That is, as between striking down the AIA and severing Title 5 protections for administrative patent judges, Congress was more likely to favor the latter.Continue Reading Arthrex & 81 PTAB Remands

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