Examination Quality vs Speed

The USPTO has had an accelerated examination program known as “Track-1” since 2011. The program allows patent applicants to advance a patent application out-of-turn such that a determination can be made within 12 moths of filing. That is, like a Lightning Lane of sorts (for you Disney fans) to skip the typical wait times for patent examination. In this way the program is said to be designed to foster “faster innovation.”

In theory, it is a great idea. If you are a start-up, for example, and need to get your claims allowed quickly for business reasons. Paying a fee for the expedited attention, agreeing not to extend filing dates of responses, and limiting the number of claims, is a fair compromise.

But, if patent examiners are rushed to judgement to meet internal deadlines, and do so without the most relevant information, the USPTO is doing the public a disservice. Recent trends also suggest that examiners may be moving these cases to allowance to get time-sensitive work off of their dockets.

Continue Reading The PTO Has a Track-One Filing Problem

Long Battle Ahead for Patentable Subject Matter Clarity

Remember the good ole days when every bar meeting had that Alice panel that said the same thing over and over? (i.e., “your guess is as good as mine”) And by good ole days, I mean the days when you skipped that panel and caught up on your emails back in your room. 🙂

Well, here we go again.

With American Axle failing to tempt the SCOTUS, the message has become clear….”Congress, this is your mess to fix.” So, we now embark on yet another adventure on sorting out the patent world’s biggest hairball – and that’s saying something!

Continue Reading Tillis Bill’s Shot Across the Bow on 101

Judicial Conference & Congressional Attention Stir Change

This time last year, the Western District of Texas (WDTX) was getting a lot of attention from Washington DC policymakers. That is, a plaintiff’s ability to guarantee that its case would be heard by Judge Albright simply by filing in his Waco court was seen as “unseemly” and, coupled with the fact that his court had close to 30% of the nation’s patent docket, improper. Likewise, to many, the twenty or so successful mandamus filings reversing the Judge on issues of venue only amplified the urgency for legislative and/or judicial intervention.

Whether you agree with the above sentiment or not, it was clear as far back as last summer that these practices were plainly living on borrowed time. Back then, it was clear within DC policy circles that if the Judicial Conference did not step in and put an end to Judge Albright’s perceived monopoly on patent cases, that the legislators were prepared to take action.

Yesterday, the Chief Judge of the WDTX took action.

Continue Reading WDTX Scatters Patent Docket – Now What?

PTAB Reform Act of 2022

Back in September of 2021, the “Restoring the America Invents Act” was released by Senators Leahy (D-VT) and Cornyn (R-TX). The bill sought to reverse virtually every PTAB development of the Iancu administration. At the time, I outlined my thoughts on the various provisions, and predicted the most controversial—from a bio/pharma perspective— would serve as cannon fodder.

Last week, a revised bill reemerged entitled the “PTAB Reform Act of 2022.” The new bill, includes most of the content of the earlier bill with only issues of particular interest to bio/pharma left on the cutting room floor.

Continue Reading Proposed PTAB Reforms Adjusted for Bio/Pharma

Tillis/Hirono Demand Answers on OpenSky

Barely on the job for a week, Director Vidal is already being politically pressured to address a festering issue of patent policy.   That issue—the use of a recycled IPR petition as a means to collaterally attack large damage verdicts— is a self-inflicted wound for the agency.  The OpenSky business model wouldn’t exist absent the ill conceived expansion of discretionary denial practices under former Director Iancu.

Senator Tillis (a vocal supporter of Director Iancu) sent a letter to the agency this past Wednesday demanding answers….gotta love politics.
Continue Reading Senate Grows Impatient with PTAB

New Confirmation to Drive New Policy?

At long last, the Senate has finally confirmed Kathy Vidal as the new PTO Director….just in time to tender her resignation before the next administration!  Ok, maybe not quite that late.  But considering it can take close to two years for any Notice and Comment Rulemaking to get through the system, these appointment delays can seriously hamstring a Director’s ability to drive any significant policy change.

So, the new Director needs to hit the ground running.  And, as usual, the PTAB offers some early hurdles.
Continue Reading Finally, a New PTO Director. Now What?

High Value Disputes Spawning Wild-West Antics

I previously explained how Fintiv discretionary practices had spawned a new, cottage industry.  That is, with fully developed PTAB petitions being available to the public — denied only as a matter of discretion unique to the original filer— profiteers formed to simply refile such petitions.  The apparent goal being to leverage the publicly available petition materials where high-value verdicts had been subsequently secured on the subject patent.  With IPR institution leverage (or threat thereof) co-pending with a high-value verdict, this business model presumes that a patent owner would be open to a quick cash settlement.

One such profiteer, a company identifying itself as “Open Sky Industries,” recently leveraged early petition materials of Intel that pertained to its patent dispute with VLSI.  That dispute went to trial in the district court after Intel’s IPR petitions were denied under Fintiv.  At trial, a $2 billion+ verdict was entered.  Thereafter, Open Sky was successful in refiling Intel’s IPR materials, getting trials instituted on the subject patents with little to no cost or investment of its own.  The propriety of such re-filing practices is subject to an outstanding POP panel request.

If the optics of this practice weren’t bad enough for the PTAB….it has just gotten worse.
Continue Reading PTAB Needs to Immediately Check Unethical Practices

Federal Circuit Reverses Newest Member

The concept of excluding the PTAB via a forum selection clause is not a new idea.  Back in 2019 I highlighted this option as the #1 development in PTAB practice for district court litigators.  Since that time, there have been a handful of cases that sought to leverage this mechanism. Earlier this week, the Federal Circuit was given another opportunity to explore this topic, and the potential policy consequences of such private agreements.
Continue Reading Shutting Out the PTAB Via Private Agreement