Senator Patrick Leahy (D) VT and Senator John Cornyn (R) TX have jointly drafted a new bill entitled the “Restoring the America Invents Act.” The Bill proposes to roll-back recent directives and policies of former USPTO Director Iancu, most notably discretionary denials of AIA trial proceedings in view
A few weeks back, the federal Circuit handed down a decision in Uniloc 2017 LLC v. Facebook Inc, capping off a complicated procedural history. In its decision, the Court sorted out the estoppel impact of IPRs finishing a few months earlier than others, and what that meant for parties common to these IPRs.
Left unanalyzed, however, was whether or not the PTAB’s initial finding of estoppel was appropriate in the first instance given the peculiar manner by which parties are joined to PTAB proceedings via copy-cat petitions.
Continue Reading Evolution of PTAB Joinder Estoppel
Earlier this week I laid out my Top 5 PTAB cases of 2020 for PTAB Practitioners, focusing on those cases that changed day-to-day practices before the agency. Like the practitioner list, my Top 5 PTAB developments of 2020 for District Court Litigators will focus on those practical PTAB developments that will impact parallel litigation practices outside of the agency.
In 2020, there were a number developments of interest to litigators, from litigation forums where a PTAB challenge is foreclosed or highly unlikely, to stipulations for avoiding PTAB discretionary denials, and new risks of collateral estoppel across a litigated portfolio.
Continue Reading Top 5 PTAB Developments of 2020 for District Court Litigators
Back in March, the Windy City panel (Prost, Plager, and O’Malley) originally held that § 315(c) was unambiguous that an existing “party” to a PTAB proceeding cannot be joined as a party. Thereafter, the SCOTUS considered the scope of the PTAB appeal bar in its Thryv decision, holding that potential violations of § 315(b) were too closely related to the institution determination of the agency to escape § 314(d)’s appeal bar.
Last week, in view of Thryv, the Federal Circuit modified its opinion in Facebook, Inc. v. Windy City Innovations, LLC to make clear that joinder issues were outside of the appeal bar.
Continue Reading CAFC Finds PTAB Joinder Appealable After All
In Mylan Pharmaceuticals Inc. v. Research Corp. Technologies, Inc., (here) the Federal Circuit held that parties joined to an IPR petition have a statutory right of appeal under 35 U.S.C. § 319 as “parties”, even if the original petitioner lacks Article III standing for appeal.
Continue Reading Joined PTAB Parties & CAFC Appeal Rights