Yesterday, U.S. Senators Chris Coons (D-Del.),Thom Tillis(R-N.C.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Hawaii) introduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act (here). Also yesterday, some of the very same senators introduced the Patent Eligibility Restoration Act of 2023.
The co-introduction of these bills suggests a plan to drive compromise on patent eligibility.
Late last week the USPTO issued an Advanced Notice of Proposed Rulemaking (ANPRM) that floated numerous rule proposals and requests for feedback — too numerous. Proposals addressing current 314(a) and 325(d) practices were not only expected, but long overdue. While these expected proposals were included in the sprawling Notice, the rule-making process will undoubtedly be bogged down by the remaining collection of controversial ideas and administrative over-reach.
Keep in mind that 314(a) Fintiv practices could soon be struck down as improper circumvention of APA rule-making. Stalling the issuance of those rules for at least another 12-18 months – if not longer – seems like a bad idea. My guess is political pressure from outside the agency led to the laundry list of additional proposals. Especially as they relate to for-profit entities in the wake of the Open Sky debacle.
Regardless, of how or why the expansive ANPRM came to be, I’ll walk through each proposal/idea in detail below (ANPRM here)
Continue Reading PTAB Rule Ideas – The Good, The Bad, & The Ugly
The recent trend of denying PTAB trial petitions on discretionary grounds has been argued to frustrate the purpose of the America Invents Act (AIA). Indeed, patent reexamination filings — the clunky mechanism the AIA was supposed to supplant — surged by 60+% last year. With stakeholders unhappy with how the PTAB is operating, interesting questions are being raised on when/how a reexamination remains viable after a failed AIA trial petition.
Last year, the Federal Circuit considered the timing of a Patent Owner 325(d) challenge to a follow-on reexamination after a failed IPR petition. This week, the Federal Circuit considered whether a petitioner that has been denied a reexamination can seek further review via an APA action of the district court.
Continue Reading Reexamination Denial Subject to APA Judicial Review
Late last month, in In re Vivint, Inc., the Federal Circuit tackled the question of whether a post-issuance review proceeding (in this case, ex parte reexamination (“EPR”)) was available to a challenger that repeatedly filed another post-issuance review proceeding (in this case, inter partes review (“IPR”)) to forward the very same argument. The court held that, while the EPR request had shown substantial new questions of patentability, “the Patent Office abused its discretion and acted arbitrarily and capriciously under § 325(d).” As such the court vacated the decision and remanded to the Patent Office (“PTO”) with instructions to dismiss.
But, don’t expect this decision to be much more than a corner case.
Continue Reading Reexam After Failed IPR?
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
I’ve ignored the Arthrex decision for a few days, largely because it never really interested me (still doesn’t). Of course, if you geek out over the severability doctrine, or the viewpoints of liberal versus conservative justices on the growing administrative state — have at it. I just always saw it as an academic exercise that would have little impact on actual day-to-day PTAB practice. As I predicted back in March, the SCOTUS result in Arthrex wasn’t exactly surprising.
While the Arthrex outcome will not change much in terms of PTAB strategy, there will be a beautiful mess in the short term.
Continue Reading PTAB Rehearings After Arthrex?
A few interesting programs this week for those interested in a refresher on patent reexamination, or looking toward 2021 PTAB possibilities.
First, tomorrow (Tuesday) brings one of my favorite CLE programs of the year. IAM’s IP 2020 (formerly Patent Law & Policy) kicks off tomorrow and runs through
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
Inequitable conduct before the USPTO is an equitable defense to patent infringement that, if proved, bars enforcement of a patent. Thereasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011). Given the increasing inventory of Final Written Decisions (FWD) in larger patent portfolios, practitioners are only now beginning to confront issues of inequitable conduct relating to agency based estoppel. That is, if a patent owner advances a position inconsistent with a previous PTAB FWD on a patent/related patent under 37 C.F.R. § 42.73(d)(3), whether such a practice constitutes inequitable conduct. It just might.
But, for the time being, the courts’ lack of experience with the PTAB’s rule-based estoppel is benefiting patent owners.
Continue Reading Patent Prosecution After an Adverse PTAB FWD – Beware
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