As I predicted just this past Monday, Chair of the IP Sub-committee, today Senator Patrick Leahy proposed some noteworthy changes to PTAB practice. While a draft bill is yet to be released, as reported by IPLaw360, several high level goals of the forthcoming bill have been outlined.
Continue Reading Senate Bill Proposes to Reset PTAB Practices
Tomorrow, the PTAB Bar Association will kick-off its annual conference. The conference will bring together practitioners, in-house counsel, and members of the bench for a dynamic discussion of Patent Trial Appeal Board (PTAB) best practices, recent developments and trends, policy considerations, and more. This year, we are in-person only!
The 3-day
With last week’s 10-year anniversary of the Leahy-Smith America Invents Act (AIA), and Senator Leahy still a powerful voice on the Senate Judiciary Committee, the timing may be right to refine the decade old statutes. Indeed, over the past few months there have been a number of discussions inside the Beltway to consider potential updates.
While there will always be a small, vocal minority that would like to see the AIA go away entirely, it seems that only slight refinements to the existing statutes are on the foreseeable horizon.
Continue Reading The AIA at 10 — Congress Considers a Tune Up?
In the words of princess Elsa…for the first time in forever.…there are a number of in-person IP conferences slated for this fall. (I’ve been cooped up with kids, I make Frozen references now)
First up is IPWatchdog Live 2021 September 12-14 in Dallas, Texas. The multi-day IPWatchdog
As we await the SCOTUS outcome in Arthrex, the Government Accountability Office (GAO) has been tasked with investigating the degree to which the Director might influence individual PTAB outcomes. In a letter to the GAO from House Judiciary IP Subcommittee Chairman Hank Johnson (D-Ga.) and Ranking Member Darrell Issa (R-Calif.), it was pointed out that the U.S. government has argued in Arthrex that APJs are inferior officers because they are “subject to significant oversight and control by the Director of the USPTO” who has the ability to “control[] which APJs decide which cases” and “provid[e] policy directives that APJs are obligated to follow.”
The letter (here) expressed a concern that the government has effectively indicated that “PTAB cases may have been decided based on factors outside of the evidentiary record and public legal authority,” which they argued “raises potential due process concerns and would be inconsistent with the intent of Congress in enacting the AIA.” While political appointees are expected to drive overall policy, of course, they are not expected to meddle in individual outcomes. Accordingly, the Subcommittee has tasked the GAO with investigating eight questions designed to explore the Director’s ability to influence individual PTAB decisions, and any instances where the Director has actually influenced the outcome of a decision.
Continue Reading Congress Questions USPTO Director Input to PTAB Trial Outcomes
For those seeking some PTAB-related CLE programming this spring, look no further than IPWatchdog. The inaugural PTAB Masters™ program, will be presented by IPWatchdog® next week, April 19-22nd. Each day the webinar will provide a different PTAB related topic. Tune in each day for 2-3 hours of interactive content.
In one of the more closely-watched cases involving patent eligibility, American Axle v. Neapco, Judge Moore recently highlighted how “bitterly divided” the Federal Circuit is on patent eligibility, and predicted with a “reasonable probability” that the Supreme Court will step in and force the Federal Circuit to reverse course on issues of eligibility.
American Axle—involving driveline propeller shafts for automotive engines—highlights the sharp divide in how various Federal Circuit panels apply the Supreme Court’s eligibility guidelines and the resulting uncertainty that inventors, patent owners, and accused infringers face in determining whether inventions are eligible under § 101 as interpreted by the Supreme Court’s ruling in Alice v. CLS Bank. Indeed, in an earlier decision denying rehearing en banc, a sharply divided Court issued two concurrences justifying the panel’s application of § 101 law and three separate dissents urging the full court to take up the issue. Understanding the differences in opinion here may help patent practitioners navigate tumultuous § 101 issues until the Supreme Court weighs in again. American Axle petitioned the Supreme Court for a writ of certiorari on December 20, 2020. The petition calls for clarity on § 101 and may be taken up in conference shortly.
The Court has shown some interest in the case, soliciting views of the government. Amicus support has also followed, including a brief filed by Senators Tillis and Coons, and former PTO Director David Kappos. Consideration of American Axle is the quickest path to some form of clarity for patent subject matter eligibility disputes.Continue Reading American Axle Offers A Glimmer of Hope on Potential 101 Reform
Over the past few months, Congress has been asked to investigate the Patent Trial & Appeal Board’s (PTAB) practice of denying AIA trial petitions in view of competing litigations. On top of that, the agency has been sued for applying these allegedly unlawful practices, and there is a mandamus pending on the same issues at the Federal Circuit.
In parallel, the agency had been pursuing a draft rule set to codify many of these controversial practices….a swan song of sorts for the outgoing Director. This effort has been closely scrutinized by White House Office of Information & Regulatory Affairs (OIRA) at the behest of many stakeholders. Given the public outcry, ongoing litigation, and feedback to White House Office of Information & Regulatory Affairs (OIRA), the agency has now taken a step back to seek further public comment on its planned rule changes.
Today the Dept of Commerce issues a Request for Comments from the public on these issues. But, responses are due within a month – What’s the rush?
Continue Reading White House Pushes Back on PTAB Rule Making Effort
Back in November of 2019 the House Judiciary Committee conducted a hearing entitled “The Patent Trial and Appeal Board and the Appointments Clause: Implications of Recent Court Decisions.” The hearing explored whether or not the Federal Circuit solution pronounced in Arthrex was effective to cure the Appointments Clause defect. While there was some debate over whether the “fix” would hold, all of the witnesses were unanimous in that Congress, could, and should, fix the issue in the short term.
Today, Arthrex was granted cert. I expect that Congress will now turn back to their earlier discussed legislative fix.
Continue Reading Arthrex Cert Likely to Spur Previously Discussed Legislative Fix
Earlier this month, a coalition of stakeholder organizations sent letters to the House and Senate Judiciary Committees seeking an investigation into the Patent Trial & Appeal Board’s (PTAB) application of discretion under 35 U.S.C. § 314(a). More particularly, the organizations argue that the Board’s application of NHK Spring is “choking off access” to the PTAB and leading to a resurgence in patent litigation of questionable merit. The organizations ask that the USPTO report to Congress on these practices, and engage in formal rulemaking to guide agency practices.
Whether the requested action is provided or not, the continued application of 314(a) in the NHK context seems destined to end.
Continue Reading Congress Urged to Investigate PTAB Discretionary Denials