Patent Trial & Appeal Board

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Agency to Consider Further Public Comment

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

Review of APJ Appointments to Be Considered by SCOTUS

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

Joinder Estoppel Narrower Than Original Petition Estoppel

Court’s have struggled with the meaning of the “reasonably could have raised” aspect of 315(e)(2) IPR estoppel. The CAFC has not had much opportunity to weigh in on this issue…. yet. But, last week the Court provided guidance on what is “reasonably raised” when a party joins an IPR petition under § 315(c).  Based on the Court’s decision, joinder may become a more attractive option for co-defendants in multi party litigations.
Continue Reading PTAB Joinder Provides Estoppel Benefit

Octane Fitness To Spur Senate Patent Reform Bill?

Judiciary Simplifies Patent Reform Debate.....Again


Although promised on Monday, the world still awaits the highly anticipated Senate patent reform bill. As pointed out previously, a major sticking point is the "fee shifting" (a.k.a. loser pays) aspect of the bill. The Senate has seemingly struggled to balance the needs of innovators that enforce patents with the need to rein in patent troll profiteering. That struggle may have been mooted today by the Supreme Court's decision in Octane Fitness LLC v. Icon Health & Fitness, Inc. (here)
Transitional CBM Challenge Program Sunsets Today

The America Invents Act (AIA) placed an expiration date on Covered Business Method (CBM) challenges.  That is, CBM review proceedings were designed as a “transitional program” that would sunset 8 years from enactment of the AIA – today is that day.

The legislative rationale behind setting an expiration for CBM was to target specific patents, namely, those  business method patents that issued between the State Street Bank, and Bilski decisions.  These patents were considered to be largely invalid under 35 U.S.C. § 101 having been issued under the more liberal 101 standard of State Street, and, providing a USPTO option for such 101 challenges was argued by the financial industry as the most efficient and cost effective path to resolution (as compared to the litigation of such issues by non-traditional patent defendants).

But, has the CBM program succeeded in neutralizing this alleged blip of invalid business method patents? If not, what is being done to potentially extend the program?
Continue Reading CBM Sunsets at the PTAB….For Now

CAFC Holds PTAB Joinder Decisions Reviewable

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

APA Action & Mandamus Petition Simultaneously Challenge PTAB’s NHK/Fintiv Framework

Back in June, I predicted that an APA action against the USPTO and/or a mandamus petition to the Federal Circuit was inevitable given the PTAB’s practice of denying IPR petitions in favor of competing district court trial dates. Well…here we are.

Yesterday,  Director Iancu was sued by a group of large tech companies for allegedly violating the APA by denying IPR petitions on the basis of a competing trial date, and late last week, one of the same companies also filed a mandamus petition seeking to force the agency to consider the merits of a petition denied as a matter of discretion even though it was filed some seven months before the 315(b) deadline.

Never a dull moment at the PTAB.
Continue Reading USPTO Sued Over Discretionary Denials

Agency Memorandum Clears Up Long Standing PTAB Debate…For Now

Earlier this week, a guidance memo was issued to the Patent Trial & Appeal Board (PTAB) on the use of Applicant Admitted Prior Art (AAPA) in IPR proceedings.  Much like the agency’s earlier 101 Guidelines on Patent Subject Matter Eligibility, the AAPA Guidance is more a pronouncement of the agency’s independent view of the law as opposed to more traditional implementation guidance on regulatory practices or new CAFC/SCOTUS jurisprudence.  As we know from the Federal Circuit’s feedback on the 101 Guidelines, such independent pronouncements are given little weight outside the agency.

Nevertheless, it is at least helpful to practitioners to have a definitive answer on this issue given the years of PTAB panel variability.  But, this guidance seems a bit short-sighted to my eye.
Continue Reading Admitted Art Ruled Out as IPR Trial Ground Reference